ANDERSON'S-BLACK ROCK v. PAVEMENT CO.

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Argument of Alan W. Borst

Chief Justice Warren E. Burger: Number 45, Anderson's-Blackrock against Pavement Salvage Company.

Mr. Borst, you may proceed whenever you are ready.

Mr. Alan W. Borst: Thank you sir.

If the court pleases, this is a civil action, a case in patent infringement which was tried in the District Court for the Southern District of West Virginia.

The trial was had and a opinion was rendered in written form declined that the patent in suit namely Neville Patent, number 3,005,280 was invalid.

Not reaching the issue of infringement on account of that adjudication.

The appeal was then made to the Circuit Court of Appeals for the Fourth Circuit here in Richmond, before which we had oral argument and after that, decision was rendered reversing the District Court, remanding it to the District Court for consideration of the infringement issue.

Stay of that mandate was then granted on petitioner's request pending of course the termination of that whole matter by this court.

The Neville patent in suit, basically, discloses a street paver and suspended from the street paver is a heat generator.

The street paver basically comprises a hopper which receives bituminous materials from a truck which has obtained the materials from an asphalt plant.

A distributor which deposits the material on a roadbed and a tamper which in vibrating fashion compacts the material on the road -- on the bed and very often a screed which irons or planes the material so as to smooth it and should finally shape the pavement.

The heater which is suspended from the paver in the Neville case, in the Neville Patent is not used in the operation of the paver to form the pavement -- the first strip of pavement.

It is used solely when paving the second strip which is to be laid in abutting relation to the first strip.

The heater functions to preheat the longitudinal, marginal edge of the first strip -- had been laid and which had allowed to grow cool and then the paver itself deposits the asphalt on the roadbed and against the new -- the preheated edge so as to form a bond therewith, a union therewith and to make the so-called cold joint.

The claims in suit, and we have considered claimed for as representative call broadly for means for laying the asphalt and means for shaping the pavement.

And broadly, therefore, covers the paver itself.

The claim goes on to recite a radiant energy generating means and further in connection with the radiant energy generating means that it comprises a combustion chamber.

The lower plate of which is perforated.

And through the holes of the perforation or adjacent thereto propane gases or butane gases are fired and the plate thereby becomes incandescently hot and becomes a source of radiant energy or infrared heat.

The radiant energy generator in the Neville patent is disclosed as far it is claimed in the Schwank Patent number 2,775,294 and the Neville specification so states that the radiant energy generator that is disclosed in the Schwank Patent is entirely suitable for the patentee's purposes.

The components of the paver and the components of the generator are all old elements which are readily conceded by respondent.

In reversing the District Court --

Justice Potter Stewart: There's is no process patent involved here though, is it, just two products?

Mr. Alan W. Borst: There is no process claims, just apparatus claims.

In reversing the District Court the Circuit Court of Appeals commented that the steps which occupy the attention of the District Court were narrow ones and went on to decide to make its decision largely based on the satisfaction of the long felt need and eventual acceptance -- the eventual acceptance of Neville's concepts by respondents experts who were initially skeptical.

The court then went on to find that the method of forming the so-called cold joint between two asphalt lanes of concrete highway previous to Neville involve the process of cutting back the vertical marginal edge and painting it with asphalt.

We feel that both this finding of the of the Circuit Court of Appeals and the significance to be attached to the expert's original sceptability, and incredulity must be weighed in terms of the prior art which was extent at that time, included in that art was British patent number 756,911.

According to that patent, it was entirely feasible to cut back -- to heat the vertical edge of the first laid lane of concrete.

There is no mention in this prior art patent of cutting back that edge and painting it with hot asphalt.

We feel that knowledge of this patent as well as other patents of the prior art as we feel are particularly opposite and their disclosures should be imputed constructively to the respondents experts as well as to the patentee himself.

Justice Byron R. White: How much of the prior art upon which you now rely was available in the patent office, all of it?

Mr. Alan W. Borst: All of it but the so-called Morcom patent which I am about to come to.

The British patent was cited during the prosecution of the Neville application.

This knowledge should be of the previous method of forming the edge should be -- we feel should be imputed as to the patentee himself who is supposed to have filled a long felt need and thereby had made an un-obvious discovery as required for patentability under 35 U.S. Code 103.

Aside from this -- petitioner believes it would be made to consider here this question of long felt need or commercial success and its function in Patent Law with regard to the determination of the validity or invalidity of patents.

Under the decisions, there is no question but that this is a marginal or peripheral question.

This conclusion was explicitly expounded by this court in the A&P. versus Supermarket Case decided in 1950 in which it said and I quote, “Commercial success without invention will not make patentability.”

The decisions over the years have said that commercial success may be used to resolve doubt as to invention but not to inject such doubt.

So therefore, recognizing that such a ground is long felt need is relevant solely on condition that after the usual test for patentability have been conducted there is genuine doubt as to how to decide the issue invention.

We have the really significant question here as to how much importance may be attached to commercial success when the only evidence of that success have been adduced by plaintiff relates to but one element of a patented combination that being the radiant energy generator as claimed of the Schwank type.

The two engineers who testified for respondent described the benefits and virtues and glories of using a radiant energy generator of the Schwank type to heat up an asphaltic edge which was to receive new asphalt in abutting relation.

They did not testify as of the success of or the unexpected benefits flowing from the combination paver and heater which is the subject of the claims.

It is the combination which is the supposed invention not the heater per se.

The original claims as filed in the Patent Office attempted to claim the heater per se in connection with its use in highway construction.

But those claims that Neville failed to get.

He also claimed -- he also attempted to get claims to a process for using such a generator.

And those claims he failed to get.

So he is now in a position where he can only assert, to discuss the scope of his invention the entire combination of conventional road paver and specific type of radiant energy generator.

Justice Potter Stewart: It's your submission that this is not a combination but rather says simply an aggregation?

Mr. Alan W. Borst: Yes.

I am using the term up till now in a rather non-technical sense, when I say combination I mean a collocation or an assembly of available elements.

Justice Potter Stewart: Selection of (Voice Overlap) The collection of other -- the collection of known ingredients?

Mr. Alan W. Borst: Right, yes sir.

Justice Potter Stewart: But technically, it is your claim that this is an aggregation and I understand your submission is that the law is that a mere aggregation is never patentable.

A combination may be patentable if it combines all elements to reach a new and unanticipated result.

Is that your --?

Mr. Alan W. Borst: That is our position, perfectly stated Your Honor.

The question naturally, therefore, presents itself as to whether the respondent's testimony on commercial success is even relevant since it goes only to the benefits of one element of an assembly of elements as patented which is whether there is any invention in this assembly of old elements.

So let us look at the so-called narrow issues or steps which occupy the attention of the District Court.

In fact, these issues involve the scope and relevancy of the prior art to this development.

It involved the question as to whether the patentee had solved a problem which had hit it to essentially defied solution.

And it went into this question of aggregation which we feel was treated rather cavalierly by the court below.

The prior art in this case which the petitioner considers most pertinent is the British patent which I have previously alluded to.

The Morcom patent number 709014 which issued on 1905 and of course the Schwank patent which shows the radiant energy generator used on the Neville paver.

Morcom had versed to the basic problem of causing new asphalt to unit with all asphalt in place in road patching.

And what is Morcom's solution?

It is exactly and precisely the same as Neville's, namely, the use of radiant energy.

Respondent has never tried to contend throughout the trial or the appeals that road patching, in this regard, presents any problem which differs essentially from road construction there being in each case the question of how to get new asphalt which is hot asphalt to unit with old asphalt which has been allowed to grow cold.

Both Morcom in 1905 and Neville in 1959 on, some 50 or more years later state that radiant energy prepares the cold surface edge and is less likely to scorch it and say an open flame.

The British patent shares everything that Neville claims exceptn hat the British street paver heats the marginal asphalt edge with a different type radiant energy heater.

It is not so denominated in the British patent as a radiant energy heater but as Judge Haynswort in the Forth Circuit correctly stated, it is a radiant energy heater since it comprises a combustion chamber which permits and which provides for the firing of gaseous materials within and an escape or discharge opening causing the bottom of the heater to raise its temperature.

And, therefore of necessity becomes a source of radiant heat from a scientific point of view; anybody in fact which have a temperature of in excess of absolute zero degrees is a source of radiant heat.

Secondly, he would seem that if radiant heat was desirable, suggested by Morcom, such a heater of any type could be obviously substituted for the radiation heater in the British claim without making invention.

Schwank, as explained, shows the heater as that component's claimed in Neville.

And that patent is in fact mentioned in the Neville patent as been exposing a heater which is suitable for the patentee's purposes.

The District Court went on to discuss this question of aggregation.

There is no question here.

And respondents' experts and certainly petitioners' expert have agreed that the paver operates entirely independently of the heater.

And the heater operates independently of the paver.

Therefore, the heater will function in precisely the same manner where the tamper, for example, has been operated whether the distributor is actually laying material or whether the screed as there to smooth the material.

This is a unquestioned fact as well, that the heater in constructing the adjoining road blocks of a single lane is removed from the paver and is placed on a separate mobile support and used to make the transverse edge of the two adjoining highway blocks in the single lane of highway.

In discussing this whole question, this court, in deciding the Lincoln Engineering case which is so heavily relied upon in its briefs and petitions, found that at least one definition of aggregation was that the total of the old elements must somehow exceed the sum of the parts.

And then finding the system there disclosed which was a system for injecting grease into the bearings of automobile which included a piston pump on a conduit communicating therewith and a coupling consisting of jaws were aggregated.

They bank the court makes at that time an observation which we think is peculiarly applicable to the situation here.

The court, perhaps, overturn suggested that if the patentee had addressed his claims to the jaws perceived, he might have found himself with a valid patent.

But in fact, he did not and then by the time this patent got before this court it was, of course, too late to do that.

It might be of interest to this court to note that there are several cases in Great Britain which deal with the subject of aggregation which have not been brought to its attention in the briefs.

And I thought I might do it now, if the court indulges me.

Chief Justice Warren E. Burger: When you supply to us by memorandum that the close of your argument as well, you may discuss the cases now but I will supply the citation.

Mr. Alan W. Borst: All right, I will do it.

One case is the famous and classic sausage machine case which was decided by the Transfer Division of the High Court of Appeals in 1890.

In that case, the meat grinder ground the sausage meat and then the filling machine was placed somehow in communication with the grinder so that that machine filled the sausage skin with the ground meat.

The High Court of Appeals Transfer Division stated that while it must be recognized as something new and useful was done here.

The fact is that the two components operate so independently at one another from the standpoint of function and are, in fact, separate from one another from the standpoint of structure that the claims to the two elements are arrogating and therefore invalid.

Justice Potter Stewart: Mr. Borst, I have the knowdghe am not the lawyer to know how similar or how different it is the British Law patents from our law or the British Law of 1890 from our Law of 1969.

Help me in your discussion with these British cases if you could indicate at least your submission as to if that laws were identical or different?

Mr. Alan W. Borst: It may be hard to generalize because much of our law has undergone transformation or modification of statute.

The question of aggregation is not a statutory matter but has come through a law of patents in this country and, I believe in Great Britain, in a parallel way to describe decision of my decision-making.

I think that the courts have felt better out of this apple boat and irrelevant to the question of standard of invention and obviousness and, therefore, have continued to retain as an operating rule.

Justice Potter Stewart: I suppose in Great Britain, is Patent Law a Common Law so to speak or are there a series of statutes as we have?

Mr. Alan W. Borst: There are patent statutes but which have been construed and so the law has evolved through construction as our law has evolved by amendment to statute.

Justice Potter Stewart: Of course, we, unlike them have a constitutional provision that we sometimes cross over.

Mr. Alan W. Borst: That is true.

The House of Lords itself in 1935 in the case of Celanese Limited versus Courtaulds with Lord Talmud speaking for the court made this definition of aggregation which I think can be accepted by American Courts today.

When he said, as I quote, “As accepted a sound law that a mere placing side by side of old integers so that each perform its own proper function independently of any of the others is not a patentable combination but that where the old integers when placed together have some working interrelation producing a new or improved result then there is patentable subject matter in the idea of the working interrelation brought about by the collocation of the integers.”

Justice Hugo L. Black: By the what?

Mr. Alan W. Borst: Collocation of the integers.

The first case that I have cited may be found that is S. Williams versus Ni in 7 RPC 62, RPC being an acronym for report on patent cases.

Justice John M. Harlan: Were there any findings by the court here that the way in which these integers do (Inaudible) were placed together the generator or the heater on top is an essential element of the patent?

In other words, what I am getting at is, is there anything that include the use of the heater on a different machine running it back at the --

Mr. Alan W. Borst: Nothing whatsoever sir.

We have contended that the only reason that Neville has done this is entirely, one, for convenience.

Here we get the same result perhaps a little -- exactly more practical and it's better to provide a separate little cart running ahead of the street paver.

Justice John M. Harlan: No finding of the District Court dealt with that problem?

Mr. Alan W. Borst: When it discussed this whole question of aggregation, it was discussing that problem because they functioned separately, the two elements, the paver and the generator exactly precisely in the same way whether they are put together or whether they were on the same (Inaudible) or whether they were on different mobile supports.

Justice Byron R. White: Well, the District Court found its patent invalid, did it not?

Mr. Alan W. Borst: Yes, it did.

Justice Byron R. White: And on the basis that there was no new function performed by any of these elements when in combination?

Mr. Alan W. Borst: Though new function performed by a patentable combination.

It would be somewhat unfair to say that there was no new function in its entirety because it is true that no one else has used before a Schwank type heater to transmit radiant energy to it…

Justice Byron R. White: No, but the District Court held that each of the elements here performed its usual function -- precisely when in combination.

When you put it together they still function as they always do?

Mr. Alan W. Borst: As they always have.

Justice Byron R. White: And that is what the District Court held?

Mr. Alan W. Borst: That is what the District Court did hold.

Justice Hugo L. Black: Did the Court of Appeals tempt to set aside that finding?

Mr. Alan W. Borst: It made no direct reference to that finding except to say that the District Court dealt with narrow issues.

I was about to give the citation the Chief Justice asked for, for the case of the House of Lords 1935, namely, Celanese versus Courltaulds as that may be found a 52 RPC 171 particularly noting page 193.

We have laterally contented in this case that this suit could also be decided on the question of exhausted combination.

A combination which has been prepped of all elements which have been previously patented may not be re-patented merely because one has improved one of the elements of that combination.

And that may be exemplified by saying that if one improves a sparkplug or a carburetor, he is not entitled to reclaim the engine block and the steering apparatus and windshield wipers and the safety belts that go today to make up a combination which we know is an automobile.

The position that we take on this matter, we believe is amply supported by the decision in this court entitled Basic Manufacturing Code versus RM Hollingted which is cited at 298 U.S. 415.

Chief Justice Warren E. Burger: Mr. Blenko.

Argument of Walter J. Blenko, Jr.

Mr. Walter J. Blenko, Jr.: Mr. Chief Justice, may it please the court.

I should like at once to answer the question Mr. Justice Blood around the court.

Mr. Justice Harlan Ray questioned whether the District Court had made findings?

There were no separate findings made by the District Court.

The only findings are such as appears in that court's opinion.

Mr. Justice White, you asked a question at the very end regarding findings by the District Court upon the co-actions of the several elements.

As I have said, there were no formal findings as such.

I think that the language which should be noted in response to your question is that conclusion of the opinion of the Trial Court.

That is on page 26 A of the printed appendix.

The last paragraph on that page contains, I think, the summarizing statement, “It is my opinion that plaintiff's combination in no way exceeds the sum of its parts.”

Justice Byron R. White: What you say 22 A?

Mr. Walter J. Blenko, Jr.: 26 A, Mr. Justice, the last paragraph commencing about eight lines from the bottom of the page.

My point that I want to make is that it is avowedly stated as an opinion of the trial judge.

Justice Byron R. White: (Inaudible)

Mr. Walter J. Blenko, Jr.: I want to carry a little bit further if I may because the evidence which we pointed to in the Court of Appeals and which we point to here is in our submission undisputed and is the other way.

And that the opinion expressed by the trial judge, we think, simply does not find any support in the evidence which was before you.

I want to develop that a little bit further, I think, if I deal with the facts I can then come back.

Unknown Speaker: (Inaudible)?

Mr. Walter J. Blenko, Jr.: I think it is a matter which is fact.

I think, necessarily I must be based on the evidence.

I do not think that.

Unknown Speaker: Is there erroneous standard in the Court of Appeals?

Mr. Walter J. Blenko, Jr.: I think it is Your Honor.

Unknown Speaker: Did the Court of Appeals find this State (Inaudible)

Mr. Walter J. Blenko, Jr.: Not referring to this language as such.

I think it is implicit and tacit and straightforward within the opinion of the Court of Appeals.

Judges Haynswort and Sobeloff dealt with this and opinion by Judge Haynswort and made birth plate player with the evidence shows.

I would like to develop that evidence with you a little bit further as I go forward.

Justice Thurgood Marshall: Good.

Pardon me.

It seems to me that last paragraph is not a finding but a conclusion of law.

Mr. Walter J. Blenko, Jr.: We are into this area, Your Honor, where it has been debated back and forth whether these are finding or conclusions.

I think, with all respect, this probably is properly a finding of fact.

In this case, I do not think.

Justice Hugo L. Black: But finding it is invalid.

That is not a finding of any facts.

Mr. Walter J. Blenko, Jr.: No.

Justice Hugo L. Black: But underlying the conclusion, it is invalid.

Mr. Walter J. Blenko, Jr.: No, Your Honor.

Invalidity is plainly a legal conclusion.

Obviousness is a factual matter to be determined on the evidence in the record.

Justice Hugo L. Black: Well, are the blank of the sentences which follow at 315 sentences?

It is my opinion that each element in combination performs in the same manner except that all the plaintiff has done is stop the four elements known as (Inaudible).

Are they not findings in fact?

Mr. Walter J. Blenko, Jr.: I think that much constitutes of finding a fact.

And I would say, Your Honor, is clearly erroneous that there is absolutely no evidence in this record to sustain either.

Justice Potter Stewart: As you get into this discussion of the evidence in your own time, Mr. Blenko, the statement in Judge Pavens dissenting opinion which is the specific aspect of what you just been discussing in which was the subject of Justice Harlan's question right in the right first paragraph.

He says, “Nor has it demonstrated to my satisfaction that the combination on one chassis of the paving machine and heat generator is necessary to produce the desired result.

That is the combination on one body in set of wheels.

Yet the combination is held patentable.

Although, for all we know, the same desired result may be achieved by two machines juxtaposed and separately propelled.”

That is I say is one specific aspect rather dramatically I would suppose presenting the issue as to whether or not this combination is simply the known expectable result of the combination of all ingredients or whether it is one in which the result exceeds the sum of its parts.

And would like to know what the evidence shows on that particular aspect if can might as know if sure can means.

Mr. Walter J. Blenko, Jr.: Yes.

I think I will say it once.

I do not believe there is any explicit evidence upon that point.

I believe that the proposition which Judge Craven brought forward here was one which was in effect how far can you nudge towards or weigh from the scope of the claim and still have an infringement.

I think it is one of these imperfect infringements if you will.

It is not a question which fairly arises upon this record because that was not the fact which was before the court.

But I think that it is the old story when you define an invention in claim language there is always a temptation.

Particularly, if one is discussing the scope of the claim as distinguished from the practical working world to say, well, if you do this and slightly bend the edges will you infringe?

I feel that this is the sort of thing that is.

But there is no evidence which directly bears upon it.

Justice Potter Stewart: One way or the other?

Mr. Walter J. Blenko, Jr.: One way or the other.

Chief Justice Warren E. Burger: Mr. Blenko, you said in response to question to Mr. Justice Brennan that the second sentence in the final paragraph on page 26A is essentially a finding of fact even though I am not cast in the farm language.

And then you said there is no evidence to support that?

Mr. Walter J. Blenko, Jr.: Yes, sir.

Chief Justice Warren E. Burger: And, now, I take it you mean that no one picked out each of the parts that were dealt with in that sentence and said you gave a testimony to the contrary.

But may not a trial of fact look at the record as a whole and viewing the record as a whole and synthesizing all the testimony make findings even though no one has no particular witness as addressed himself to each of the parts?

Mr. Walter J. Blenko, Jr.: I think he certainly may do that.

I think that in doing so it is always open to review.

We submit that upon the whole record that this statement simply is not supportable that the contrary is affirmatively shown.

The contrary is an agreed fact and is admitted by the defendant's witnesses and by the real defendant who is not the named party.

Who proclaimed that in the trade their position in the courtroom here is directly opposite to everything they say to the words and the art.

Chief Justice Warren E. Burger: When you say they proclaimed it to the trade, do you mean in there advertising material and that sort of thing?

Mr. Walter J. Blenko, Jr.: Yes, Your Honor.

Chief Justice Warren E. Burger: Do you think the court can rely on that as evidence of the fact, this context?

Mr. Walter J. Blenko, Jr.: The material is in the record.

I point, primarily, to the last page of the appendix volume where Era Oil, who is the rail defendant, stated in this context, “This remarkable new development is a dramatic breakthrough in asphalt highway and road maintenance.

Infrared heat is not new but the application is revolutionary.”

We agree to that.

Let me just answer this.

I am sorry.

Era Oil as vice president appears witness at the trial.

He acknowledged that these were the applications of Era Oil.

I asked him, did he wish it to be understood that they were misrepresenting the fact to the public?

He said, “Certainly not.”

I think that is good evidence.

Mr. Justice White, I am sorry.

I brought (Inaudible).

Justice Byron R. White: Does the court feels in fact say even if there cutting new these two elements and even if the combination of the former (Inaudible) nevertheless there is patentability here?

Because whatever the thought of putting these together.

Mr. Walter J. Blenko, Jr.: In our submission, the Court of Appeals did not say that.

Justice Byron R. White: What did they --

Mr. Walter J. Blenko, Jr.: I think then it would plainly be wrong.

But I do not think that is the case which arises upon this record.

Let me see if I can develop that a little bit.

First of all, there are several matters here which I think are beyond dispute if you look at the record as distinguished from arguments and contentions of counsel.

First of all, Neville did create a new combination of elements.

You can look through the entire record and you will not find Neville's combination any place in the prior art.

I think that the most (Inaudible) comment upon that was again in the testimony of Mr. Quail.

He was Era Oil's Vice President.

And at pages 40, 41, 42 A in the printed appendix, I asked him where he found the elements of the Neville patent.

And he said, “You have to look at all the prior art to find it.”

Those were some eight pieces of prior art in number.

So, he had to look at eight of them in order to find the Neville patent.

So, we say on that basis and upon a review of the element of the prior art individually that this was a new combination.

Chief Justice Warren E. Burger: What was that last page reference?

Mr. Walter J. Blenko, Jr.: Yes, 40 A through 42 A, Your Honor, the last question and answer at the top 42A.

Now, the second point that I want to develop is that this combination was not an obvious one.

Nowhere in the record will you find any testimony by people skilled in this art showing that it was obvious or stating it was obvious to them.

The evidence is just the contrary.

We brought in two witnesses.

One of these men had been Director of Research for the Pennsylvania Department of Highways.

The inventor came to him.

And in effect, he said, “It would not work.”

And eased him out of his office.

The second was a civilian employee of the Air Force.

A man greatly concerned with asphalt paving.

And he was interested in it.

And he spoke with very real embarrassment which I think will show upon the record and said, he showed it to me and I did not believe it would work.

I had to ask somebody else that I could rely on who had seen it work to tell me.

That I got interested.

There is testimony here as to the result.

There was a test job done at Anderson Air Force Base.

It is the subject of testimony.

It showed a complete difference between the combination of the patented suit and what had been done before that time.

Now, this brings me to what is the essential point and that is the elimination of the cold joint.

This arises when you lay two lanes of asphalt bituminous black top, whatever you would like to call it.

It's the sort off thing, we see on the ordinary highway.

When you lay them side by side, you almost in variably lay one lane and then bring another lane and it alongside later.

Inventor was an individual.

He was one of these men at the patent system.

I think, may be said, designed to encourage and protect.

He was not a part of any organization.

He concede that if you put on a radiant energy at the joint area as you lay the second, a budding course, that then he would eliminate this cold joint where you never had a really good matching or marriage, as they call it, between the two mats which have been laid down.

And he went around established people and he tried to make his point with them and got nowhere.

He finally got backing from a layman who did not know much about it either but who sold.

And they went to work.

And they have now managed to bring the system forward and show that this is a real and a workable scheme.

Justice Hugo L. Black: In that sin, applying the radiant energy at the time you put the places together?

Mr. Walter J. Blenko, Jr.: Yes, Your Honor.

Justice Hugo L. Black: That is what you consider to be the new discovery?

Mr. Walter J. Blenko, Jr.: Yes.

I want to go a little bit further than that.

We have all spoken here in the courtroom in very generalized terms of course.

But I want to take that a little bit further if I may?

The claim which is printed and I would not try to deal with it orally is lengthy, specific and detailed.

It is in reality a narrow claim.

And if you go through it, you will find many, many limitations and requirements.

Each of which must be met in order to infringe.

It is not a broad claim at all.

Now, the point I make from that is this.

If this claim is so narrow, it certainly is an easy thing to avoid infringement by changing the few of these details.

And you can make so much more radical changes than trying to mount these on two separate chassis.

You can still stay on one chassis but you can certainly avoid infringement very easily.

They do not do it.

And the reason is, of course, that there is no alternative.

This is the essential scheme which we think demonstrates eventually.

Now, speaking again very broadly without going in to these details of the claimed language.

There are three elements which we have talked about for convenience.

These are the asphalt or bituminous spreader and then the screed element which shapes it and you also have the radiant energy generator which bears upon the previously laid lane and which makes it receptive for the asphalt which is being laid alongside.

So as the machine goes down the highway, you have the one side a previously laid lane of asphalt, the paver is running beside that.

The radiant energy generator is directing the radiant energy on to the existing lane of asphalt and then a new lane of asphalt is laid alongside.

And because you do have the radiant energy, you get your marriage of the two lanes and you avoid this cold joint and everything that that entails, the problems that arise with matters at court and the testimony in the printed appendix.

Justice Hugo L. Black: How long has radiant energy has been used for this purpose?

Mr. Walter J. Blenko, Jr.: For this purpose, Mr. Justice Black, it never was used before this inventor's time.

Other people had talked radiant energy.

They had had thoughts and they had had ideas.

I would be the last one to suggest that people had not tried all sorts of things.

This inventor was not coming in to a field that was wide open to him.

This inventor was coming in to solve a problem that had existed in the field for many, many years.

People had used all sorts of earlier schemes and they had been unsuccessful by and large.

Reference has been made here to the Morcom patent.

And I want to say at once that you will find really little about it in the record because Morcom was really not the thrust and the defense in the trial court.

It came along for the ride.

The primary reference has simply been abandoned at this point.

So, you would not find very much testimony on Morcom.

The testimony that is there is that it would not work.

And it would not work because it different from what is claimed in the patent.

You will find in the patent claims, very specific requirements that this radiant energy generator have perforations or (Inaudible) that a combustible gas be delivered through these and be combustant adjacent surface and a number of other things.

Morcom lacks all of that.

And Morcom would not work as a result.

They could use Morcom, if they wanted to but they do not want to.

Justice Potter Stewart: Was part of the problem until this came along, the unavailability of the right kind of combustible gas?

Mr. Walter J. Blenko, Jr.: There is no evidence to that effect, Your Honor.

And I think not.

Certainly these bottled gases have been around for nearly 30 years to my own personal recollection.

Justice Potter Stewart: What is the date to this patent?

Mr. Walter J. Blenko, Jr.: Application was 1952, if my memory is correct.

I am sorry, 1959.

It is of course several years later.

Justice Potter Stewart: If I can be sure, I understand your legal position, Mr. Blenko.

As I understand it, you told us that first of all that this was a combination, not an aggregation.

And you told us that it was a new combination.

Mr. Walter J. Blenko, Jr.: Yes.

Justice Potter Stewart: But that, as I understand it, does not mean that that is necessarily patentable so far.

Those are just the first two steps in the combination patent, right?

Mr. Walter J. Blenko, Jr.: That is part of it, yes.

There is one more step as I understand.

Justice Potter Stewart: There is one more step.

And you say that it was not obvious.

And for that statements, you rely on testimony of the people who said they did not think it would work.

They were skeptical about it.

Mr. Walter J. Blenko, Jr.: And lack of any countervailing testimony.

Justice Potter Stewart: Down the absence of any countervailing testimony?

Mr. Walter J. Blenko, Jr.: Yes.

Justice Potter Stewart: Is that enough in your view to mean that it is patentable?

Mr. Walter J. Blenko, Jr.: Yes Your Honor.

I think that that does carry the burden for us.

I would like if I may simply to restate that back in my own terms.

I think it essentially is what you say.

There are three Sections of the statute to which we look in these matters.

These have been discussed most recently by these courts in Graham against John Deer and United States against Adams.

Those are Sections 101, 102 and 103.

I may be presumed to state my understanding of it, it would be this.

That Section 1 requires that there be an invention in fact.

I think the defensive aggregation really is statutory and is a Section 101 defense.

In short, you must show that you have some elements brought together which do co-act the invention in a patentable or legal sense.

It is not enough to claim a table and a chair.

The mere fact that you claim two things does not mean that you have any combination or legal convention.

So, I say that as a Section 101 defense.

Section 102 defense is the defense lack of novelty.

Justice Potter Stewart: Lack of novelty?

Mr. Walter J. Blenko, Jr.: The problem is that no one has ever found an affirmative definition of invention.

And I think that comes from its nature because it is always pushing into the unknown.

After we know the invention, it is very easy to have 20/20 hindsight and see all about it.

But at the time the invention was made, when you are all reaching forward, it is a different matter.

And so, we always end up putting this in a negative sense.

Novelty is not present at default.

If it is disclosed in the exact convention, then you have Section 102 defense.

And finally, you could get over 101 and 102; you have the Section 103 hurdle which was not an obvious invention to make.

I think, in essence, this is a restating of the way you have.

Well, I thought it would be helpful to restate it in my own language.

Chief Justice Warren E. Burger: I take it you rely rather strongly on the testimony of the military engineer who dealt with laying asphalt pavement on Air Force.

Mr. Walter J. Blenko, Jr.: I certainly rely upon his testimony.

I also rely upon the testimony of Mr. Witkoski who was the former head of the research laboratory in the Pennsylvania Highway Department.

Chief Justice Warren E. Burger: And you say that there is no testimony in this total record which disputes their statement that this was not obvious to them?

Mr. Walter J. Blenko, Jr.: None whatsoever.

I know of no such testimony at all any place in the record.

I do know some other testimony which goes the other way and that testimony is that the defendant is a equipment foreman, and even at the time of the trial, he said, “I am not quite sure why we do this but we do it.”

Now, here is the man who is actually out in the field who I think is the skilled worker in the art. even then he had not been able to see it.

I think that shows a complete lack of obviousness.

Now, I want to say one word very briefly about the cases which have been referred to here by the petitioner.

They have referred primarily to Lincoln Engineering against Stewart Warner.

I think all of the other cases which they have cited are of the same strife and they all stand or fall for the same proposition.

I think that Lincoln Engineering against Stewart Warner is entirely in accord, Graham against John Deer, United States versus Adams and the decision of the Court of Appeals in this case.

In short, I think the decisions in the patent field are about as consistent as the decisions you will find in any body of law.

I do not think they are inconsistent at all.

The problem arises on the application of the law out of the facts.

Justice John M. Harlan: Mr. Blenko, is this the first litigation about your patent?

Mr. Walter J. Blenko, Jr.: Yes.

This is the only action on this patent, Your Honor.

Justice John M. Harlan: (Inaudible)?

Mr. Walter J. Blenko, Jr.: No, there have not been any formally made and some suggestions made but there has been nothing brought forward beyond that point.

Now, I want to say this, that these cases I see at are all consistent.

In the Celanese Case which was cited by counsel at the argument is again entirely consistent as I heard him read it.

And those stand as I see it for this proposition, if you have several elements, each independently hold, and if you bring them together and if they co-act to produce a new result -- In other words, if their co-action adds up to something more than their individual actions, then you have a patentable invention.

That was so in Lincoln Engineering against Stewart Warner where a number of the claims were held valid.

And we think that that is properly so here for this reason that if you omit the radiant energy generator you will get the cold joint.

If you omit the spreader you would not have a pavement.

If you omit the shaper you would not have a pavement.

You must bring these three together and operate them together in order to get this new and admittedly beneficial result which is the elimination of the cold joint.

Now, my difficulty as I understand it here is that the petitioner declines to deal with the overall result.

It is not answer to say these are not mechanically connected.

Of course they are not mechanically connected.

They are acting at different places.

But when they act at different places and the process is finished, you have a new result brought about by this machine.

The difficulty, it seems to me, is one which was characterized by Mr. Justice Holmes, a good many years ago in a trademark case, I believe, of breaking the fagot, stick by stick.

They declined to look at the overall situation which exists here.

We think that when that overall situation is examined as we think that was properly done by Judges Haynswort and Sobeloff of Court of Appeals that the necessary result is that you have here a new beneficial combination, one which was not obvious.

We think that the District Judge and Judge Craven ignored the overall result and focused if you will on too narrow a point of view of looking at the individual elements and not looking at the overall combination and recognizing the new result.

Cordially, we ask that the judgment will all be affirmed.

Thank you.

Chief Justice Warren E. Burger: Thank you.

Mr. Borst, you have two minutes left that is just about one flick before lunch hour.

Rebuttal of Alan W. Borst

Mr. Alan W. Borst: Petitioner refers to Era Oil's ads as extolling some part of this invention.

Well, it is true at some part of this invention as claimed.

Era Oil only makes the heater and so it hardly could be extolling the combination which is claimed, the heater plus the paver.

But there was testimony adduced on behalf of petitioner and behalf of its assertion that there was aggregation to hear.

That is that in the appendix on 38 A and to the trial transcript on page 113 through 114 at one point.

I know that there is other testimony in record.

Chief Justice Warren E. Burger: I noticed that there are three expert witnesses here who testified rather explicitly that this was not obvious to them.

They had very large credentials.

Did you have any expert witness to testify who said that this was obvious in their minds?

Mr. Alan W. Borst: They testified that there was no invention here because they --

Chief Justice Warren E. Burger: That is a conclusion of law.

Mr. Alan W. Borst: That, of course, the conclusion.

It is right.

But their contention has been that the use of radiant energy is old and therefore the continued use of it should be permitted.

Chief Justice Warren E. Burger: Well, of course the use of radiant energy is used on football players and baseball players.

Mr. Alan W. Borst: I overstated.

Radiant energy to form an asphaltic bond or joint between two abutting lanes of highway.

That is in the art.

And whether or not has been used of course is not necessarily relevant to the question here if it is of a prior art.

Chief Justice Warren E. Burger: I think that is your time, Mr. Borst.

Thank you for your submission gentlemen.

The case is submitted.