Peter M. Roberts v. Sears, Roebuck & Co.

ROBERTS, Plaintiff-Appellee, Peter M.

SEARS, CO., ROEBUCK &

Defendant-Appellant.

No. 82-1886. Appeals,

United States Court of

Seventh Circuit.

Argued March 1983.

Decided Dec. 22, 1984.

Rehearings Denied Feb.

rected that the case be dismissed. This en required court determined that the case banc consideration. A majority now reach- es a conclusion at with that variance Hunter, Jr., Latham, Watkins, James G. panel. At issue is the original oftentimes Hedlund, Ill., Lynch, Chicago, Hunter & in- confused role of the in a defendant-appellant. invalidity action in which the fringement in suit is raised as an affirmative Davidson,

Louis Davidson, G. John B. defense. Neuman, Sidney Harry Roper, Chicago, J.

Ill., for plaintiff-appellee. I CUMMINGS, Judge,

Before Chief BAUER, WOOD, CUDAHY, ESCHBACH, experimented, Those of us who have POSNER, COFFEY, Judges.* Circuit successfully, “do-it-your- with the always to car approach bicycle repairs may self” WOOD, Jr., HARLINGTON Circuit a have had occasion to use conventional Judge.** socket wrench. When we were able to tell interesting struggles After of with years bolt, the nut wished to remove the patent tutelage issues under the of the dis- former, and had located the socket of the Circuit, bar in this this tinguished patent size, problem correct became how to court, by reason of the Federal Courts Im- remove the socket then attached to the 1982, Act leave provement of soon must pulling, wrench. After prying, muttering, appellate experts these issues to the of the pulling, operation and more the two-handed Appeals United Court of for the States Roberts, completed. was Plaintiff Peter patent Federal Circuit.1 Our view of mat- having personally experienced such frustra- ters therefore will be of little future conse- tion, problem; addressed himself to that in nevertheless, quence; hope we to leave.the 1963, designed proto- he and constructed a good field in standing. wrench with a type quick-release socket court, jury In a trial in the district feature that to plain- permitted facilely user patent tiff Roberts’ was to with change found be valid sockets one hand without infringed; judgment muttering. and was entered in his customary pulling, prying, and favor in an amount in of eight application excess mil- Roberts filed an for a United 1964,2 lion dollars. appeal, original panel, patent April, On States on the wrench in March, in a concise opinion by Judge rejected authored Pos- which was 1965. He ner, concluded the patent extensively application was invalid then amended his obvious, reversed the district presented single upon and di- claim3 which a * Judge Judge participate ultimately persuaded formally ager; Pell and Flaum did not he was “suggestion” consideration of this case. invention as a to Sears submit his thereafter, May, Shortly 1964. Roberts left ** hereby acknowledge the brief of amicus We employ. Sears’ Systems, curiae National Business Inc. utility, 1982, steps Improvement val- 3. Sears took to ascertain 1. The Federal Courts Act of 97-164, 36, ue, invention, 125(a)(3), pos- patentability Pub.L. No. 96 Stat. with § repealed 1292(a)(4), 1965, April, patent U.S.C. the basis for § itive results. In outside appellate jurisdiction judgments this court’s of counsel advised Sears that there was “some infringement “in civil actions for which patentability.” Roberts v. basis for limited except accounting.” Although are final for Sears, 976, Roebuck & jurisdiction now lies in the United States Court 1965, Cir.1978). May, In the Patent Office indi- Circuit, Appeals of for the Federal 28 U.S.C. patent. cated it would issue the Roberts Rob- 1292(c)(2), jurisdiction we retain § cases, issue, erts, uninformed that a this, appeal such as in which notice of negotiations fully-informed entered into 1, 1982. See Pub.L. was filed before October concerning purchase rights Sears Sears’ 97-164, 57, 403(e), No. 96 Stat. 58. §§ ultimately use was Roberts’ invention. Roberts assign rights induced to all to his invention in Roberts, time, employee 2. an at Sears royalty up per return for a two-cent unit sold decided to show his man- invention store patent rights. owner all We stat- September was issued on lawful patent formally Roberts 1965. ed that would be entitled to sue infringement occurring after Janu- Sears, assignee of all Defendant ary Although preclud- 1977. Sears was rights patent, to Roberts’ mounted an ad- challenging validity pat- ed from explained, in vertising campaign lay- which trial, clear ent in the first we made terms, advantage man’s principal if Roberts for could do so sued Sears Roberts’ invention: “Push-button claimed 20, 1977, Id. post-January infringement. fight. ratchet wrench releases without a separate Ever tried to a socket from an pass. And it came to Roberts instituted when hands ordinary your ratchet wrench Sears, infringement against suit greasy? Forget just press were it. You ground defended on the button on new Craftsman wrench. Sears anticipated and obvious. invalid as both separate easily yanking.” Rob- They —no trial, which was Roberts demanded erts’ wrench was an enormous quick-release Following a request. bifurcated at Sears’ commercial success. infringement, trial on the issues of five-day alleging, Roberts sued in Sears infringement, validity, willful alia, ter fraudulently that he was induced to on the relevant substantive was instructed assign rights his to the invention to Sears. forms given “special law and five verdict” The jury awarded Roberts one million dol “yes” pursuant to be or “no” answered lars damages. This court affirmed the They read as follows: Fed.R.Civ.P. judgment district court’s against Sears We, (1) jury, find that the defendant its decision not alter monetary Roberts’ infringed patent the Roberts willfully award, but reversed the district court’s de the Roberts wrenches by selling type termination it authority that lacked to or after 1977. January der rescission of the agreement assigning We, (2) the jury, find that the Orszulak Sears, rights Roberts’ to Sears. Roberts v. Z type design or defendant Co., 976, (7th Roebuck 573 & F.2d 986 Cir. infringes started to sell 1980 the 1978)(Sears I). patent Roberts in suit. remand, Following prepared, the Sears We, (3) the find that the defendant jury, executed, Roberts, through and tendered to the willfully infringed patent Roberts court, the district reassignment any and the or Z by selling type Orszulak rights all patent pursuant the obtained after January wrenches 1977. 15,1965, the June the agreement, equi- sole We, (4) the the jury, patent find Roberts table relief anticipated by this court anticipated by is new and not the however, Sears I. The district fur- the Carpenter patent pat- or Gonzalez ther ordered the reopened entire case for an ent. accounting “unjust enrichment” Sears’ (5) We, the find that the jury, 15, from June 1965. this court appeal, On patent matter of the Roberts con- held that because Roberts had elected to sidered as a whole was not obvious to submit damage his claim to a he was jury, one skill in the art in the precluded ordinary pursuing equitable from the rem- edy years 1963-64. “unjust restitution for enrichment.” Co., Sears, Roberts v. Roebuck & 617 F.2d All number three were special but verdict (7th Cir.1980). affirmatively jury. the by answered Num- A two-day

This ber three is not now issue. court further held that Sears was followed, re- damages the lawful owner from trial on the issue of patent rights of all 15, 1965, 20, 1977, June in a award for Roberts of five January sulting jury when Roberts, the through reassignment, became million dollars. $10,000. agreement a maximum of An Id. erts on June 1965. by

encompassing signed these terms was Rob- “legal submitting jury questions” findings no composed court The district The three- anticipation. motion, of obviousness Instead, on Roberts’ own. of its of this court reversed the dis- panel adopting an order court entered the district judgment jury based on the trict court’s answered affirmatively findings its verdict, contrary reached its own conclusion find- by verdicts special rendered obviousness, was invalid for patent have been patent Roberts ing the be dis- complaint obvious, been and directed and to have or anticipated Sears, Roebuck & missed. Roberts concluded district court infringed. The Cir.1983). peti- Roberts’ and valid good “is Roberts rehearing suggestion willful tion for award for damage in law.” granted, en banc was rehearing sale patent by Roberts infringement by vacated order dated decision was panel was increased wrench Roberts-type award March 1983. two, bringing the total a factor of by perma- court $8,190,254.4 The district necessary to address one We find using, making, enjoined nently Sears instructions whether issue: through infringing wrenches selling mandate reversal of utilized procedure ex- 28, 1982, Roberts September for a new trial. We and remand judgment judgment motion for date. Sears’ piration this issue with a our discussion of premise or, in the alter- the verdict notwithstanding patent principles. review of relevant native, new trial was denied. for a II alia, inter contending, appealed, Sears I, cl. 8 of the Constitu Article invalid because § Roberts Congress promote “to empowers tion and further anticipated by, claim was Arts, of, and useful Progress art Science light obvious in have been Authors and for limited Times to securing examiner. not before the references their re- Right5 to erred in Inventors the exclusive district court also claimed the Sears may fraudulently procured patent consti- provides: “When the dam- of a U.S.C. § jury, ages laws.” In such the court shall of the antitrust are not found tute a violation context, “monopoly” applies to the In either event the court term assess them. damages up conduct, times the patent right to three increase the not to the itself. unlawful Although the de- view, found or assessed.” Judge Markey’s amount inventor has the In Chief damage is discre- to increase the award cision monopoly” at the moment the inven- “natural a tionary ordi- the trial this discretion patent genius the The of tion is conceived. narily in cases of should be exercised is system of the invention is that disclosure litigation. infringement See or bad faith willful encouraged; his natural mo- the inventor cedes generally 5 D. § 20.03[4][b] property exchange Chisum, nopoly in Patents for a short-term right. patent equated whether a is note that We jurist, T. the Honorable Howard 5. One eminent monopoly, is used a term we concede with a loosely many formerly Judge Markey, United Chief cases, important only is insofar in Appeals and Patent States of Customs Court analysis equation produces an economic as the Judge presently States of the United and Chief validity patent conflict with the in direct of statute, Circuit, Appeals Federal of for the Court “[patentability provides that recently suggested patent a is not to be by negatived the manner in which not be shall appears monopoly, equated a term that with a U.S.C. § was made.” 35 the invention “Why patent the statute. Not nowhere in the opinion original panel as we in this The Statute?”, by Judge Howard T. Address Chief it, suggested is to that obviousness understand University Chicago Markey, Law School of determined, part, by to least in reference at be 26, 1983). (April 154 defines § 35 U.S.C. considerations, analysis economic certain right seventeen-year grant patent of “the as a disagreement; we have some with which fairly selling making, using, or others from to exclude considered, following selected ex- the specifies that § the invention.” 35 U.S.C. the in the context of be read tracts should personal “patents of shall have the attributes opinion. original Markey suggests entire Judge property.” Chief purposes prepared to state for are not pseudonym We right is “but a to exclude others ” monopo- patent confers a course, possible of this case ‘property.’ “[a] to use it is for Of patented products idea ly in which the over the any property violate the anti- in a scheme to embodied, monopoly, among its other “Similarly, attempted enforcement trust laws. spective writings seq.6 and Discoveries.” In the et The Act sets forth three criteria of Congress exercise of this enacted power, patentability: novelty, utility, and nonobvi- (the Act), Patent Act of 1952 1 ousness.7 Graham v. U.S.C. John Deere § judgment U.S. these resources into the ments and oly expression ours to make. manner in which an invention is made tion of training, expensive testing compensate we think it would have been made buck es and obviousness defeat ousness turns on whether of these soon.” cept by was invented.” The ideas worked kind of contribution not think it was that kind of are not contribution, entitled to el essential elements were well known when it changed easily with one hand.” We have no quarrel simplicity formation that constitutes the invention—and cause “Roberts’ “[w]hat such a case would confer no benefits that products obviousness can be ent in framers of the Constitution and the Patent made hope might tions—inventions that do not cost much in time or other resources to make because denies them granted where the invention would have been fare.” Code would not have wanted cept of obviousness identifies such inven- polized product and so reduces consumer wel- effects, In Aronson v. Even Finally, Nor do we believe the determination of obvi- Nor would we We do not believe the Nor are we opinion proceeds on the 257, & judgments, anyway, offset the costs of patentability. coming up prepared with that Co., results in a lower if the patent protection. was new 99 S.Ct. ideas, or that community.” so we are not impose itself and as one would patent protection only of refining promise the inventor in these circumstanc- that is inconsistent with this clear 697 F.2d at 797-98. processes embody patent protection.” doing and it was prepared congressional smoothly “[pjatent and about record Congress a task for which no statement; however, Quick with a workable embodiment deny patentability solely quick-release believe we do not unnecessary was a device in which these 1096, making adopt; simply were of a unlikely equipment, panel opinion We disavow suggest in to determine that prepared to enable sockets to be 59 L.Ed.2d 296 protection Point Pencil Roberts v. monopoly, has declared that the monopoly.” necessary.” as. “[i]t this case both draw excessive genuine, output “[t]hat stated as of minor recognized intent. invention, soon, to be induced ex- a test which we costs of most of the in- grant mechanism is patents to make the was Roberts’ of the mono- anyway, if it was the would over- without just ques- any Sears, but it was stated that and we do “[t]he supported prolonged expect improve- they Co., of a because monop- existing (1979), test of test of special “[t]he to be Roe- pan- con- pat- 440 not any are be- 7. 35 U.S.C. that: 35 ousness novelty required pertinent part that: less— 35 U.S.C. type protection, provides that: the Act: would have been obvious at the such A invention is tion to if the sought invention there shall be considered not the invention was who has fulfilled the scribed as set forth in section 102 of this the reasonable conceive and last to reduce a time invention thereof graphs (1), (2), invention thereof another who had not or granted this title before the A ain. applicant or on an international (g) applicant other filed in the United States before the therefor, subject to the conditions and re- ers useful improvement (e) country, invention; second, (a) vention remain there for the free use of the quirements of this title. Whoever invents or discovers inventions, to stimulate further innovation composition stringent requirements and to seek First, patent law seeks to foster and reward U.S.C. Supreme patent may person concealed it. the invention was described in a before the respective the invention was known or used printed publication that differences between the requirement ^[*] this practice to be assure that ideas in the process, machine, manufacture, permit § § prior on an once before the invention thereof for 103, § shall be entitled to a country, the diligence Court sis 101, general not matter that is patent, patent, thereof, dates of to which sets forth which describes matter, application applicant’s for not be obtained subject identically In conception by patent expires; third, explained public made patentability, provides or of one (4) or or abandoned, suppressed, determining priority promotes invention, application by requirements patentability, conception or (cid:127) for matter as a whole applicant of section ^[*] in this or a any for invention thereof eligible patent protection to who was first statement of the disclosed obtain a practice new and useful subject practice, public patent by if! any prior the nonobvi- disclosure of or described but purposes though country by and the other. for for 371(c) time statutory provides new and also the another ^[*] domain art are by patent, foreign matter the in- public. by or reduc- para- title oth- the the de- un- an- to, of or of

1331 Co., 143, (7th Cir. 693, 545 Wilson & 15 L.Ed.2d 1, 17, 86 S.Ct. U.S. 1960): suit, the infringement patent In a the successfully of of may challenge speak questions have come to defendant We patent any “facts,” facts,” “subsidiary plaintiff’s “primary validity facts,” facts,” one of “ultimate any “evidentiary by proving thereof claim facts,” patentability facts,” “documentary “physical three conditions of these “inferences,” evidence,” satisfied; facts,” inval- “oral proved the patent if not inferences,” of “findings not reached. “reasonable id, infringement issue is the law,” “conclusions,” of fact,” “conclusions (7th Corp., 701 F.2d v. Wesbar Moore fact,” law,” “questions of of W, Inc., “questions B & Cir.1983); Swofford fact,” of law and “cor- Sears, questions “mixed Cir.1968). conced- F.2d law,” of and so on ad infini- rect criteria quick-release the Roberts utility the of ing that we are simple answer is tum. mechanism, undeserving pat- it is of claims semantics, dealing in frequently too all satisfy the because it fails protection ent always our choice of words does the antici- novelty, of statutory conditions magic prefer we would reflect in this which is at issue pation feature of to them.8 ascribe case, and nonobviousness. labyrinth conflicting of We enter trial court erred contends that

Sears guidepost Pat- ease law with one basic of jury the two issues submitting in —the interpreted by itself as Su- ent Act novelty, and ob- anticipation, negates v. John Deere Court. Graham viousness; preme re- argues further Sears 684, 15 L.Ed.2d 545 86 S.Ct. 383 U.S. these issues jury to determine quiring Supreme pronounced Court (1966), the the claim interpret it to necessarily required validity ques- is, with ultimate a function that patent, in Roberts’ law; patenta- the determination tion of court. We exceptions, for trial limited give “to requires the courts ble invention claims of our discussion of these premise ap- standard effect to the constitutional to the trial by recognizing error in each application, propriate demand for infrequent with an presented Id. at Congress.” scheme of the statutory case infringement in a trial re- 688. The determination at determining S.Ct. task of falls the most difficult construction, statutory quires an exercise subsidiary to plurality of issues which of recognized, is which, Court Supreme as the validi- the ultimate determination the devel- practice; statutory application determination. ty are content to which of the factual opment la- use of inconclusive The indiscriminate applied is within statutory standard is be of confu- great deal engendered bels has of the fact-finder. province law. The lack of sion in the field of reasoning in circuit must uniform decision a device patentable, To be useful, the researcher of the classified as in opinions new, properly codrt leaves then, governing patentability, the standards The issue of issue whether vention. legal constitutes patentability present inquiries: several what determination involves it disclose in answer. art and what does prior or factual issues with no definitive content; are there differences of this Judge Hastings, recognition scope Chief claimed in disorder, art and the stated between Circuit’s contribution improve- the latter an which render in Armour & Co. v. vention separate opinion in a legal having science have rendered person No two term's of ordi- made to a invention was subject “law” and “fact.” ... better service than' nary in art to which said skill any readily They accommodate themselves Patentability pertains. be shall not matter give meaning them.... What desire to we negatived by in which the inven- the manner refuge in them? The judge has not found tion was made. defining them succeed in man who could enemy. public the law- commentator described 8. As another would be a Jury (1930). distinction, at 270 fact L. Judge Green, And 1332 former; novelty anticipated the im- if it has been aby prior

ment on the would or in this or a publication foreign obvious to one of or- provement have been use, country by prior knowledge, or or in art at the time dinary pertinent skill in the v. vention in this country. the invention was made. Armour & Co. This court has Co., anticipation stated that a techni Wilson & strictly at 156. 274 F.2d defense; “[ujnless cal all of the same ele inquiries The first two determine patented ments are found [of device] [in 102; terms, in there novelty simple under § a art single prior exactly the device] prior must a difference between each art be way same situation and united in the same sought pat reference and the device be function,” perform an identical the for “new.” ented for the latter to be. deemed Illinois anticipated by mer is not the latter. if exist does 103 Only such differences § Plastics, Works, Tool Inc. v. Sweetheart require a determination whether the differ Inc., 1180, (7th Cir.1971). 436 F.2d 1182-83 subject sought ences between the matter stated, however, We also have that “[w]hen art are such that prior distinguishing pur features only have matter as a whole would ported prior product invention from a art been obvious at the time of invention to one insubstantial, may properly are the earlier ordinary of skill in the art. Nonobvious anticipate product.” be said to the later ness, then, those inno distinguishes useful Shelco, Co., Inc. v. Dow Chemical F.2d 466 capable sustaining vations that are a denied, cert. 613, (7th Cir.), 614-15 409 U.S. v. Graham from those that are not. 876, 125, (1972). 93 34 L.Ed.2d 129 S.Ct. Co., John Deere 3-4, 11, 383 at 86 U.S. S.Ct. Thus, Circuit, in this the test has been one 686, at 690.9 of substantial is sufficient identity;10 “[i]t turn first We to more detailed general aspects if the are the same and the novelty. discussion of A device is “new” if difference in minor matters is such as its essence has not been disclosed in a suggest ordinary would itself to one of skill v. 102(a), (e), art device. Amphenol Corp. General (g) pro Section in the art.” vide, form, Corp., Time 431, distilled that a device lacks (7th Cir.1968). 397 F.2d 438 Although novelty utility purpose the conditions of The of the 1952 revision was to fos- 9. incorporated original “uniformity were in the Patent Act of ter and definiteness.” Graham v. 1793, nonobviousness, Co., 18, as the third condition of John Deere 383 U.S. at 86 S.Ct. at 694. patent validity, not, however, was introduced the Patent The revision was intended to 1952, applied Id.; Act of 1952. Prior to change patentable courts the level of invention. “invention,” judicially-created Pro, Inc., 279, criterion of Ag 273, first Sakraida v. 425 U.S. 96 Greenwood, enunciated in 1532, 1536, Hotchkiss v. 52 U.S. (1976) (Inven- 47 S.Ct. L.Ed.2d 784 248, (11 How.) appli- 13 L.Ed. 683 requirement). Congress tion is a constitutional produced cation of the “invention” criterion inquiry that an into obviousness believed unpredictable body inconsistent and of law be- “permit practical patentability,” a more test of cause it allowed the ultimate determination of emphasis inquiry quality. on rather than patentability upon “subjective to be based Co., 17, Graham v. John Deere 383 U.S. at 86 Industries, Republic whims” of the court. Inc. at S.Ct. Co., Schlage v. Lock Cir.1979). Rich, Judge anticipation As of sec- co-author 10. The classic test of has been later, infringe, tion stated: stated to be: That which will if See, anticipate, e.g., Knapp if will earlier. analysis, In the final all it amounted to was Morss, 221, 228, 81, 84, 150 U.S. 14 S.Ct. invention, thought if the court (1893). Although clearly L.Ed. 1059 this court useful, though patentable, new and was not infringement inquiry identity views the as to then it did not involve “invention” and vice equivalence, substantial the final determination requirement versa. The for “invention” was requires, ordinary of which a bal- plaything judges they who be- as ancing credibility, persuasiveness, mysteries, delighted came initiated into its evidence, fact, question weight expound devise and their own ideas of what see, Co., e.g., meant; Wolens v. F.W. Woolworth very lovely resulting. prose some (7th Cir.1983), Rich, F.2d the issue of novel- Principles Patentability, 28 Geo.Wash. novelty ty important respect: (1960), is a Republic differs one L.Rev. cited in Indus- tries, validity, component Schlage which is an ulti- Inc. v. Lock 592 F.2d at 967 p. 1333. n. 10. infra of law. See mate

1333 trial does maintain ultimate con- Brothers, Inc. v. Schick court Popeil also See anticipation. hold trol over the issue of To Electric, 162, (7th 164 Inc., 494 F.2d Cir. the Supreme would be to vitiate otherwise Sciaky v. Broth 1974); Welding, Inc. Deep patent validity determination 1227, Cir.1969). Court’s ers, Inc., (7th 1234 417 F.2d Novelty, a of law. question is ultimately is determined identity Substantial nonobviousness, is condi- like and a utility patent the language the of reference to by precedent patentability. any giv- In tion claims, the ambit of the which define be the ultimate novelty may en lack of Thus, the determination claimed invention. such, as patent validity; of the determinant has been antici whether a device patented to be within the issue must be deemed requires a art pated by prior a reference the court. province of the (1) identity the of two-step analysis: pat- between the Assuming differences scope, device, as well as its must patented art and reference prior ented device each the claims submitted be determined finding anticipation, a of under preclude Office; (2) by the Patent and allowed test, the disclosures the broader obviousness device, defined, as must be the so patented may negative art of references prior the prior art reference. compared with each light the patent- because in their invention patent of the claims is Construction the would have been obvious at ed device ’ law, v. Super Corp. Products question a of person was made to a time the invention 748, 756 D P Way Corp., pertinent art. ordinary skill in the having Cir.1976), the ultimately responsi and thus Co., 1, 383 86 Graham v. John Deere U.S. patent infringe of trial in a bility 684, (1966), 15 L.Ed.2d 545 established S.Ct. If, however, a jury. ment case tried to which measure the exclusive means explain is needed to a extrinsic evidence 103. Republic under section nonobviousness claim, meaning term of art in a Co., Industries, Lock 592 Schlage Inc. v. a factual issue disputed, of which is narrow 963, (7th Cir.1979). reviewing a F.2d 972 Id. jury presented. for determination is the Graham stan- application trial court’s dard, are mindful of the Court’s admoni- we art refer prior The issue whether require- of the tion that “strict observance ence and are substan patented device down will result ments laid here question tially may be treated as identical which Congress arid definiteness uniformity pure in a case in which no construction v. in the Act.” Graham called for 1952 presented of fact are disputes substantial 18, at 86 383 U.S. S.Ct. at John Deere documents is clarity such that the court can determine ultimate con While the descriptions

mere comparison law, one of ... validity at is § tained therein whether the devices issue basic However, ... lends itself several condition substantially are identical.11 scope inquiries. exist Under disputes § where factual as to factual material art to be prior are and content scope prior and content of the art determined; pri- differences between the art ref the differences each between device, at issue are to or art and claims identi erence and ascertained; of ordinary level fied deter by the trial issues fact-finder, pertinent art resolved. mination, skill if a is to be the the obviousness Against background, say This is not to presented. are Cramer, him under- Manufacturing and devices before are Singer merits 11. See Co. evidence, (1904). when without extrinsic U.S. 48 L.Ed. standable 24 S.Ct. otherwise, ap- caution in of a technical nature commentator has counseled subtleties One infringe- plying Singer developed through expert rule the issues testimo- are anticipation: like, substantially change ny might ment or the import thereof. layman judge, the field who [A] trial Litigation, Zarley, Jury Trials Patent may earnestly contemplated by patent, Drake L.Rev. erroneously that the docu- but believe 1334 subject matter by

or nonobviousness Obviousness is measured not secondary determining is determined. Such considera- what would have been obvious success, long artisans, tions commercial felt but by as to actual but considering needs, others, failures a hypothetical person, possessing unresolved of etc. whether give light utilized to might pertinent be reasonable skills in the art and art, surrounding origin knowledge prior circumstances of all would have sought matter to be patented. found same solution when addressing As or indicia obviousness nonobvious- himself to the same Id. problem. Invalidi ness, have inquiries may ty these relevance. should not be found on the that if theory development is obvious it 17-18, (emphasis Id. at 86 at 693-694 S.Ct. have person must been obvious to a having added). ordinary skill in the art. Buzzelli v. Minne see that the readily One can factual Co., Mining Manufacturing sota & 480 F.2d inquiries necessary to the determination of 541, (6th Cir.1973). Judge 542-43 Learned anticipation (i.e., scope and content of put way: Hand art prior and differences between each judge To on our own that this or that prior art reference claims of the was, new assemblage of old factors suit) compose part also not, “obvious” is to substitute our tripartite factual inquiry upon which the ignorance for the acquaintance with the determination of obviousness must rest. subject of those who were familiar with anticipation itself inquiry, largely fac it. nature, Hughes tual in Ingersoll- Tool Co. v. Co., 501, Reiner v. I. Leon F.2d Co., (2d 285 504 1106, Rand 437 (5th Cir.), F.2d 1108 Cir.1960), denied, 929, cert. 366 U.S. 81 denied, 918, 2230, S.Ct. cert. 403 91 U.S. S.Ct. 29 1649, 6 L.Ed.2d 388 (1971), L.Ed.2d 696 is subsumed within the obviousness inquiry. Under the obvious It also should be borne in mind test, however, ness an additional factual that obviousness can be determined inquiry is to be made: the level ordinary precise presented; reference to the facts skill in the pertinent art must be deter intuitive analysis distorted the inven mined. simplicity retrospective tion’s self-evi dence must be avoided. is not to Simplicity concepts,

Several crucial as expounded Skee-Trainer, be with equated obviousness. upon in progeny, Graham and its are em- Co., Manufacturing Inc. v. Garelick 361 bodied in the section 103 standard. 895, (8th Cir.1966). 899 Experience F.2d The nature of the problem con has shown that some simple of the most fronting the would-be inventor defines the advances have been the most nonobvious. Industries, relevant Republic art. States, Inc. U.S.P.Q. Van Veen v. United 151 Co., Schlage Lock 592 F.2d at 975. Perti (Ct.C1.1966). Patentability 506 does not de nent art has been defined as that art an pend upon astonishing breakthrough or which one reasonably expected can be technology. creation of a new Ma Sauer look problem Products, for a solution to the that the Corrugated Finishing chine v. attempts Inc., device to solve. Morpul, (7th Cir.1981). 642 F.2d 206 Mills, addition, Inc. v. Crescent Hosiery F.Supp. 265 a court must careful (E.D.Tenn.1967). 303 Inquiry into the declare an innovation because it has obvious level of skill in the ordinary pertinent art is become obvious through hindsight.” Id. “ because a necessary patentable try’ invention is not the same as ‘obvi ‘Obvious ” must ingenuity evidence more and skill ousness.’ Novo Industri A/S v. Travenol Laboratories, Inc., than that possessed by ordinary mechan Goodwin, ic acquainted Republic Cir.1982), the business. In re quoting F.2d Industries, aff’d, Inc. v. Schlage (C.C.P.A.1978), Lock 599 F.2d 1061 F.2d at 975. (C.C.P.A.1979). well jury, as as tive functions is the on manner

Nor focus appellate disputes review: scope achieved or on invention was which the the facts are within subsidiary to Graham it. is im the mind behind of quality “[I]t however, jury; responsi- province the resulted ‘the invention whether material of ob- the ultimate determination bility for from and long experimentation toil ” judge, with the trial viousness lies who v. John Deere genius.’ of Graham a flash as must whether the facts found determine 8, 8, at n. at 16 n. 86 S.Ct. 693 383 U.S. legislative the within stan- jury -fall the Note. section 103 Reviser’s quoting dard. often Although to 1966 courts prior court does not sit to appellate An fact, as a of question with obviousness dealt adjudicate novo the issues under de factual of validity, established Graham of obviousness. lying the determination is the ultimate deter nonobviousness which trial, in a bench the Graham When made minant, law. court question as a of This are reviewed under factual determinations has obviousness as a consistently viewed erroneous of Rule clearly the standard law, legal of that determina but question 52(a), Rules of Civil Procedure. Federal upon tripartite rest the factual tion must When factual determinations have these See, eg., forth set in Graham. inquiry limited, is by jury, been a our review made Corp. Tape International Dickey-john v. issue, an the instructions are not assuming (7th Cir.1983); Corp., 710 F.2d 329 tronics a mo whether denial of ascertaining the Engineering, Inc. v. Manufacturing Dual & trial tion for a new or a motion a Industries, (7th Cir.) (en 660 Burris judgment the verdict was notwithstanding denied, 101 banc), cert. 449 U.S. S.Ct. appellate an of An court’s abuse discretion. (1980). 66 L.Ed.2d With the Gra 90 independent judge’s review of trial con the in ham -mandated factual determinations the predicated upon clusion of law is factual hand,12 the court must draw the inferences in determinations made the district court. induce, findings reasonably the and 2 D. generally See Chisum, Patents the legal question reach ultimate whether (1983). n. 32 § 5.04[3] subject the matter the differences between to an of turning Before examination how prior to be art are sought decisional were allocated be- responsibilities as such that the matter a whole in we tween must judge have been at the time the would obvious total determine whether there was a ab- person having invention was made to a subsidiary disputes sence of factual skill in ordinary pertinent art required trial dis- have 103; prior of all 35 knowledge art. U.S.C. § of of entire case as a matter law. pose Pro, Inc., Agv. 425 U.S. at Sakraida Inc. Manufacturing Engineering, Dual & 1536; Corp., at Moore v. Wesbar S.Ct. Industries, 619 663. Burris F.2d at F.2d at Ill Graham, setting in forth the ana steps determining Figure to be taken in a convention- lytical below is Shown obviousness, (3) It of a handle respec- clarified the al socket wrench. consists necessarily noted, standard, biguous previously be said two Gra- first the same cannot 12. As we inquiries scope respect question ham factual to the con- as resolution of the obvious- prior ness, high- the differences be- requires application tent of the art and “the of a at are tween the art and the claims issue particu- ly legislative ambiguous to a standard anticipation relevant determination Comment, Appellate See Re- lar set facts.” well, key being determin- distinction Patentable Inven- view of Determinations of ing anticipation, prior art references are tions, (1961). As 29 U.Chi.L.Rev. however, singly. juncture, viewed At this matter, policy labeling as a of obviousness analyses anticipation and obviousness di- spe- question requirement of a of law and verge. Although required factual determi- its determination cific factual foundation for may necessarily predestine specific nations subjec- highly serve as checks on otherwise whether two devices resolution tive determination. identical, substantially relatively unam- are pushbut- respect and a detachable socket The ball with pin; ball (1) ton on the head of the wrench corre- can assume pin one of an infinite number of (also sponds pushbutton 1) with the on Rob- positions relative to one depending another quick-release depth erts’ mechanism shown below upon dimple. of the socket Youngdahl, 2. Dr. Roberts’ ex- Figure ball will be cammed outward as far as witness, pert explained the structure and necessary is engage dimple. socket operation quick-release the Roberts This alignment” “selective feature principal object mechanism. The of Rob- claimed to unique advantages: offer it re- smooth, to provide erts’ device was a means for sults in a quick-release op- reliable eration; a socket from a releasing conventional it allows use of sockets with vari- engaging wrench another in a dimple depths; one- ous it automatically com- wear; operation. Although handed the Roberts pensates prevents for socket it “hang quick-release detent; mechanism retains the up” ball- of the ball and it allows for (4) detent utilized in the type conventional one-handed operation removing both wrench, in of a place spring directly socket, behind replacing sockets. To release the ball, springloaded (5) Roberts uses a pin pushbutton (1) depressed, moving that (6). moves center of the stud pin position where the ball can begin pin contains a specially-shaped cam- to move along sloped recess of the pin. ming alignment,” recess, recess “Selective Once the ball is in the the socket can key device, feature of the Roberts refers to fall of own weight. pushbut- With the the' type pin positioning ball and that depressed, ton still new socket results from the “camming action” between slipped securely on and retained releas- sloped recess of pin and the curved ing pushbutton, all in a one-handed surface of the ball. In the retaining socket operation. It is obviously easier to use the position, longitudinal small movements of wrench than it is to understand what makes the pin changes result in of position of the it easier to use. removal of the socket from witness, lease or Smyers, testified expert

Sears’ wrench. Roberts’ claim denominates nothing in mechanism; he quick-release as a his device further Youngdahl if the testified claim does Roberts’ testified that further removed, spring arm is a “camming action” recess. specify particularly-shaped between inclined surface of the recess may may

and the ball not force the ball toward the locking position; “may cam” numerous transcript The trial discloses “may jam”; or it in Youngdahl’s opinion, structures, disputes opera- factual as to the Carpenter geometry provide cannot tions, of, and functions and the differences alignment. cross-examination, selective On between, art and the Youngdahl, asked to assume that the Car- suit. penter very device contained a weak spring arm, agreed that the force generated by the Youngdahl Dr. testified that Carpen- “camming might action” overcome the device, ter a locking device for a socket spring force and allow the ball to move into (U.S. wrench in 1928 Patent No. recess, thereby effecting release 1,660,989) quick-release was not a mecha- stated, however, He further socket.15 nism, was designed positive but to effect a spring a weak arm will not éffect the lock- wrench, lock of the ing pri- socket on the wrench of the socket on the the through mary goal Carpenter the use of a device. spring arm.13 He further testi- fied to the Carpenter opera- structure and tion as Carpenter’s follows: essential ele- Smyers contrarily Carpen- testified that ment, the arm which spring upon the ball ter a quick-release Although wrench. rests,14 was usually designed prevent conceded that the text of the Smyers Car- ball moving into and becoming stuck penter did not so he specify, stated recess, thereby inadvertently allow- that he arm spring believed was an

ing unlocking of the socket. Although Car- optional feature. Smyers testified that narrow, penter long, contains a triangular- pushbutton depressed, when the is the re- slot, ly-shaped purpose aligned is to receive the cess in the device will be Carpenter arm; spring lock, weight with the ball. The of the socket will to release the the user recess, force the ball into the releasing pushes place the button inward to the re- He socket. further testified that cam- ball; ball, cess however, under the does ming slightly action between slanted not move into the recess the spring because sides of recess and the ball will force arm continues to bear it outward. There- locking position. the ball to its fore, it is claimed the socket must be re- moved it will not forcefully; fall of its own

weight. Insofar as the Carpenter device Youngdahl’s on the testimony Gonzalez discloses a pushbutton, pressing it merely device, a ball socket attachment impact for unlocks the socket but does not effect re- tools and socket wrenches in 1965 oversimplification Youngdahl’s opinion, 13. It is an spring of the devices to 15. In even if the locking releasing state that' the enough functions arm were weak to allow the user to reciprocals. designed are mere A device manually ease, remove the socket with the ball positive locking may achieve a effect contain spring will still offer resistance because the shapes par- elements of various and sizes in a Roberts, Conversely, though recog- behind it. ticular combination that will not effect release nizing always that the socket fall not of its in the same manner as another device with a weight, always may own stated that the socket geometric composition. different any part be without on removed resistance of the ball. Youngdahl Carpenter pin testified that support only attempts will the ball if the user pull the socket off when the wrench is locked. (U.S. 3,172,675),may Patent No. be summa- has referred to the Sears factual raised designed disputes expert testimony rized as follows: Gonzalez was as quibbles,” “semantic “linguistic sophistry,” effect a lock of the socket on the positive “petty details of “a terminology,” grab-bag wrench under the adverse conditions en- contentions,” tools; and “imaginary the flat sur- distinc impact countered with tions.” If is all it may actually flange, face of the with which the ball is differing to after views are normally posi- “holds the ball out amount engaged, say it as a weighed, is for therefore, planned, as small tively”; longi- matter, acting factual not for this court pin do not result tudinal movements We, like the trial who fact-finder. change position Young- in a of the ball. denied without comment motion for Sears’ designed dahl stated that Gonzalez his de- summary judgment on the issue of vice so that there would a sharp discon- validity and its subsequent motion for a tinuity pin flange, between the giving verdict, directed believe evidence edge rise to the flat the ball. supports presented questions was sufficient to raise pushbutton When the is depressed to re- of fact determination on ele socket, lease the drops space the ball into a ments, operations, pri- and functions of the behind the In flange. Youngdahl’s opinion, or art references and the differences be open space behind the flange Gonza- tween them and the Roberts mechanism. performs lez receiving one function — We are prepared to resolve the factual the ball in the socket removing position; disputes experts between the and to come will not invariably perform the function of to our own factual conclusions. camming the ball outward into the socket retaining position,16 as Roberts’ recess will. IV perform order to the dual function that does,

Roberts’ recess face sloping must be Application of the principles enun cut in the behind flange, space II, and the the ciated in the supra, “special Section to flange enlarged. It was fur- Youngdahl’s procedure verdict” and attendant instruc ther opinion that realistic limitations on tions by the utilized the trial court mandates size of a socket preclude wrench would the the conclusion that the jury impermis was sibly necessary enlargement space. pat of this allowed to be the final arbiter of validity. ent however, Smyers, opinion was of the space the behind the flange in Gonzalez will Initially, we note that the jury receive the ball and allow the socket to fall required was the interpret scope and weight of its own or be manually removed. identity patent the Roberts claim.17 It was his further opinion camming that a That the asking jury. was too much of sharp claim, action between the of the edge flange patent Construction of the a prereq and the will upward ball move the ball uisite to the validity determinations of engage a new socket. infringement, He also stated that is a matter of law for the designed Gonzalez was to achieve “selective Only dispute court. a factual as to the alignment”; pin the ball and can assume an meaning patent of a term of art used in the infinite positions engage claim, number of required shal- the resolution of which re low or deep-dimpled sockets. sort to expert testimony, properly would Youngdahl pertinent portion 16. did state on cross-examination 17. The of the instructions camming place that a action take between reads as follows: sharp edge the ball and the of the Gonzalez You are instructed that in order to under- flange. components He further stated that two identify stand and the invention covered generated by up- of force are this action —an patent, viewed the Roberts his claim is to be ward force and a lateral If the force. lateral description in the context of the written greater, force is the ball will not move outward patent, patent drawing, proceed- the the socket, engage the and the user will have to ings in the Patent All must be read Office. invert the wrench and shake the the ball into scope together in order to determine the aperture. meaning of the claim. skill in the Super ordinary obvious to one of been jury.18 to the submitted have been n motion, On Roberts’ Way Corp., D P art in 1963-64. Corp. v. Products findings as its own adopted court court’s construc district Because the trial at 756. jury finding verdicts” of the “special necessary was Roberts’ claim tion of anticipated was neither the Roberts disputes factual resolution jury’s on infringed. and was The district subject matter nor obvious between the differences “good was art, error then added that the court prior of the claim for a in law.” Sears’ motion and valid process. entire decisional shadowed the has or, in notwithstanding the verdict judgment addition, explicitly jury In alternative, new trial was denied. for a to deter instructed, objection, over Sears’ it was error to instruct argues Sears obvious question of legal mine the ultimate ob- legal question jury to determine merely instruction An attendant ness. viousness; contends that further Sears the Graham underlying factual identified findings subsidiary to made no factual jury to “con jury and instructed the inquiries obviousness, but ren- the determination of parties presented sider the evidence” issue, legal on the finding solely dered a jury, respect to them.19 by the trial court. adopted which then was the proper appli about evidénced confusion upon reliance this court’s deci- apparent of obviousn legal standard cation Equipment & Pumps sions in Panther Co. ver ess,20 “special to return proceeded Inc., Hydrocraft, not have 468 F.2d 225 Cir. dict” that Roberts’ deliberations, During meaning “se- 20. the course of its 18. We note that the of the term alignment” questioned. following Dr. lective has been submitted to the trial incorporates Youngdahl term request: testified that the implicit concept camming; in Sears’ con- the tention that Roberts’ claim does not May we have some clarification of the obvi- state or hung trying up are on ousness test. We place patentable suggest camming is either person in the shoes of the ourselves saving of the invention is feature or a its connotes limitation having ordinary in the art. Must we skill alignment” belief that term “selective attempt whether to determine something camming. other than by assessing whether or not suit is obvious that “person” in 1963 would have construct- portions in- Pertinent of the trial court’s following mechanism an ex- follows: ed the Roberts structions to the read as art. Our confusion amination of you that the In the event that Roberts wrench was new determine pages your anticipa- last three has to do with the and not ted, necessary you [dealing factual it is still to determine with the Graham instructions inquiries legal whether the defendant has met its burden of of standard obvious- proving that the Roberts would have ness]. been obvious under Section Title instructions The trial determined that the United States Code.... adequately jury a informed the of as whole applicable law, jury’s request and denied the hereby that in determin- You are instructed for clarification. obvious, ing whether the Roberts was jury’s question inquires whether it Part of the you has should consider the evidence which “by attempt obviousness rrfUst assessing to determine presented by parties respect been the factual ‘person’ per- whether or not that [a [Listing following matters: the Graham ordinary having skill in the in 1963 son art] inquiries]. mecha- would have constructed the Roberts question You are to determine the of obvi- following examination of the nism art.” The issue is not perception person ousness based on the of “person” whether the ordinary of Defendant has the burden skill in the art as of 1963.... actually have constructed the Roberts establishing of ob- mechanism; person whether a nor is the issue prove must obviousness viousness and preponderance appli- in art “could discover what skilled you the evidence. If find of by doing The what he did.” cant discovered burden, that the then has carried its defendant is whether it would have issue under the law you “yes” following must answer to the Application what he did. of been obvious to do special verdict: 864, 867, Lemin, 1382 C.C.P.A. We, jury, that the matter find as a whole of the Roberts considered ordinary was not obvious to one of skill years the art 1963-64. ' (Emphasis added). Industries, Inc., denied, But, 1972), ris 619 F.2d at 667. it cert. U.S. S.Ct. verdict, (1973), general Dual was added that the use of a 36 L.Ed.2d 685 Manu special interrogatories, Inc. v. Burris In with or without or- facturing Engineering, & dinarily will serve no because the dustries, Inc., (7th Cir.1980), purpose F.2d 660 legal trial court still must decide the issue “special that the verdict” Roberts contends It pointed obviousness. out that no more than ask the procedure did although general verdict standing alone disputes; resolve the material factual be will give presumption rise to that jury may cause a not be asked to find facts factual issues have been resolved in favor of vacuum, legal in a it was the trial court’s the prevailing party, presumptions are of duty applica to instruct the on the law fulfilling obliga- little use to a trial court ble appears to the case. Roberts also legal tion to decide the ultimate issue of necessary findings contend that the factual obviousness. The Dual court concluded verdict, from the presumed jury’s should be special that “the verdict device allow may and further the trial court ruled on utilized, jury, if one is to serve a useful obviousness as a matter of law in denying resolving specific function in contested is- judgment Sears’ motion for notwithstand facts, sues as to the concrete it should ing the verdict. added). (emphasis be used.” Id. In patent particularly, type cases In this case the directions of Dual verdict and instructions utilized the trial were not followed. The verdict form uti court are keys proper effectuation of the lized was “special” only sense distribution of decisional responsibilities the legal patent validity issue of was bro Dual, among judge jury. In in a rare ken down into the components of obvious exercise of this court’s supervisory powers, anticipation. Proper special ness and ver Judge writing Pell for the en banc dicts, however, are to be addressed Judge Sprecher dissenting, directed that the subsidiary questions of fact that com one of two alternative procedural methods pose tripartite inquiry upon Graham be utilized in those instances where jury legal which the determination of validity trials of patent issues cannot be avoided. rest, must not to the obviousness and antici preferable method was stated to be the pation components patent validity them special use of verdicts: “[bjecause only is- selves. sues of fact subsidiary legal question of obviousness are within the province of light this court’s instructions the jury, its resolution of those issues of used, special Dual that verdicts should be fact should ordinarily be articulated in spe- arises whether the failure to cial 49(a), verdicts under Rule Fed.R.Civ. proper special utilize verdicts constitutes an P.”21 Alternatively, it was stated that the abuse discretion. At least one circuit “same result by special achieved has suggested may.22 court In Panther interrogatories returned with a ver- general^ Pumps Equipment Hydrocraft, & Co. v. 49(b), dict under Rule a device primarily Inc., Cir.1972), 468 F.2d 225 this court designed to test the jury’s application of the declined to find in the circumstances of law in a reaching general verdict.” Dual case an abuse of discretion in the trial Manufacturing Engineering, & Inc. v. Bur- court’s refusal to submit thirty-two special 49(a) Rankin, 21. Rule of the Federal Rules of Civil Pro- 22. See Baumstimler v. 677 F.2d provides (5th Cir.1982), may require cedure that “the court in which the court stated: a special interrogatories jury only “While the use of is left special to return a verdict in the form judge, to the sound discretion of the trial failure special finding upon of a written each issue of places to utilize this method in a case a give jury fact.... The court shall to the such heavy convincing reviewing burden of the court explanation concerning and instruction the judge that the trial did not abuse his discre- may necessary matter thus submitted as to tion.” We note that Fifth had the Circuit not jury findings upon enable the to make its each supervisory powers °even exercised its to direct issue.” procedures that certain be utilized in cases. the However, interrogatories “by court’s special since jury. to the interrogatories the returns a jury this court to before it Pumps instructions in Panther the decision to di- powers jury verdict.” Id. at 228. That the supervisory general has exercised be followed. procedures preclude certain not general may rect that a verdict returns is exact- case present was done in the What on legal review of the conclusion appellate The court to avoid. sought Dual ly what the guidelines the Graham if validity under verdicts, but in Special to utilize undertook properly was instructed. jury over to the the whole case doing so turned trial, court’s jury in other the any As verdict special chosen the Having jury. law are to rulings questions on Dual’s ignore it was error procedure, validity If the ultimate issue of review. Dual, But, from apart even instructions. it is subsidiary questions, on depends fact comport not with utilized did procedure the that duty jury to instruct the the court’s Pumps. Panther the facts one verdict if it should return the and Pumps, parties In both Panther way one and a different verdict are found issues of fact court had confused trial the facts are found otherwise. if law; validity relating all issues issues of will reviewing court appeal, Id. the On to the infringement were submitted and matters of fact presume disputed that “the asked interrogatories” jury. “special Four prevail- the favorably resolved have been and were valid patents the two whether with the trial ing party accordance impor- It is infringed. were they whether Because defend- instructions.” Id. judge’s whether the trial to note that the tant issue challenge propriety ants did jury to decide permitting erred in court instructions, not an they were judge’s trial was not of obviousness legal question Pumps. the court in Panther issue before Panther court before the specifically Rather, clear, however, that in argued defendant Pumps. Pumps did make Panther verdict was jury the' way view of be given instruction must compulsory that a reviewing reached, for a impossible it was verdict is utilized: is general when a “[I]t three-step court to determine whether that it jury to instruct the duty the court’s prop- had been required by Graham analysis if the facts are return one verdict should made. erly if the a different verdict way found one In other found otherwise.” Id. facts are reiterated that Pumps The Panther court instructed that if words, jury must be law and that in is a obviousness finds, A, B, C, D, render a it must facts case, to a other case tried any a less than strict Anything certain verdict. are for court jury, questions of law court a trial procedure to this Alloca- adherence jury. by for the of fact are questions duty active an abdication of its constitutes jury respec- of their judge tion between control over the issue be ac- ultimate responsibilities may tive decisional retain verdicts or obviousness.23 special the use of complished Association, proper if retains the trial v. American Medical Act In Wilk (7th Cir.1983), through reviewed adherence this court the issue strict control over “general and attendant instructions following procedure: verdict” per analogous se violation context of a per se jury [Bjefore to find a is freed although the Act. We noted that the Sherman violation, trial court must determine court was verdict form utilized the district jury which the is evidence from there “special” in the the issues of causa- sense engaged in certain defendants find that damages separated the oth- were tion and conduct, (not the court ... which conduct issues, general in that er it was per decide, se jury) must constitutes questions whether asked in two to determine ex- it must be violation. such 1 and defendants had violated sections is to plained its function Act; words, liability issue “was not in other conduct, described whether certain decide questions, from broken down into a series of instruction, precision or did in the did with judge might the have the answers to which imposed active role not occur.... [T]he Id., judgment.” 217. We the at determined respect upon to the con- trial the submitting jury issue the made clear that per se violations demand [s] cept that the per se violation of the whether there has been a 1342 tual findings, Pumps

Panther does suggest itself not a certain Verdict on obvious- judge, having given that the trial the re- ness was required. The trial court abdicat- instruction, quired compulsory also must ed its legal over the issue. control the rule on issue of independently obvious- willing Nor are to we construe the trial general ness after the verdict is returned. court’s determination that the patent was Under Panther Pumps, the trial judge re- “good and valid in as an indication Jaw” tains over the legal ques- ultimate control duty that it fulfilled to “give effect through compul- tion of the validity standard, the by constitutional appropriate sory general instruction a supporting ver- Dual, case, dict. it was stated application, statutory that on the in each the findings presumed of the factual basis Graham v. John Congress.” scheme of the then de- general verdict, court must a the Deere at at U.S. S.Ct. 688. obyiousness. cide the issue It amounts to The trial court’s determination was a mean- Panther Pumps the the thing. same Under ingless pronouncement. It is the compulso- procedure, finding facts, the certain jury, in Pumps Panther ry by instruction mandated permitted express also is its opinion on that permits presumption the that fac- the issue, the legal but the responsibility for disputes tual have been resolved in favor deciding the legal issue remains with the the prevailing party. Under the circum- trial the judge, guided by jury’s factual stances of the trial court could determinations. The procedure instruc- presume, we, nor that the facts were tions utilized in this case were deficient in of, in found favor Roberts merely because every respect. the jury ultimately legal made the determi- There was no attempt present case nation that his would not have been Pumps the Panther to utilize -sanctioned obvious. The court trial had no sufficient general procedure.24 verdict jury basis, otherwise, factual presumed for merely was instructed determine obvi- ousness; ruling that “good the and valid it was not instructed that if the supported evidence particular set of fac- in law.” jury Relying Pumps, ap- be instructed that if it that a on Panther the [finds] court of particular D, A, B, C, peals presume disputed defendant done ha[s] held it would that the proceed find that such conduct [can] matters of resolved in fact were favor-of per se violation. prevailing party. constitute^] appeals’ The court of inde- Id., at pendent review of the record disclosed substan- jury’s support presumed tial evidence in cognizant

24. We are Fifth Circuit’s deci findings of fact. The court further determined Valtek, Components, sion in Control Inc. v. correctly applied that the trial court had law to these Inc., Cir.), denied, (5th 609 F.2d 763 cert. facts; because the trial U.S. 101 Components, S.Ct. L.Ed.2d484 addressing judgment the motion notwith- In Control ed the the trial court instruct verdict, standing necessarily considered jury obviousness; to determine the-court rejected and patent because, defendants’ contention that jury further instructed the that the Graham law, was obvious as a matter of inquiries “primary factual were factors to motion, ruling on the the trial court determining obviousness, consider” in and sub indicated that its conclusion would not differ from the jury question mitted to the whether the verdict, judgment subject patent differences between the matter patent was valid was affirmed. ed the claims and the art were such procedure We do not believe utilized that the as a matter whole would have Components the trial court in Control com ordinary been obvious to one of in 1966. A skill in the art ported with this court’s decision in Panther “general entered, verdict” was find minimum, Pumps. Pumps At a the Panther ing that the differences not have been general procedure requires verdict “an instruc appeals obvious. The court of held the trial tion of the on-the-one-hand and on-the-other- submitting court did not err in J., variety.” (Rubin, concurring hand in at 775 Id. jury. interrogatory “The was not so broad part dissenting part). We would ly framed as to leave ultimate determina Judge viewpoint further note Rubin’s has jury.” tion of obviousness to the Id. at 767. subsequent found favor in a Fifth Circuit deci instructions, Under the trial court’s Rankin, sion. See Baumstimler v. general was to base its verdict on the Graham 1982). Cir. factors, appropriate questions of fact. We cannot sanction the procedure utilized of this constitutional system and the judi labeling the by jury’s cially-created determination of ob- doctrines that relegate an ap “general viousness as a Affixing pellate verdict.” court to proper role in the sys tem, provides label arguments insecure basis for Sears’ on the extent which we presuming Graham factual determina- examine and evaluate the conflicting tions have been made. That would be noth- evidence afford no basis for this court to ing sophistry. proceed less than We further. believe the We do not intend as a placement of a court to make a “general jury’s verdict” label on a factual deci sions. It is procedure elementary that the merely asked the jury to documenta ry pass evidence rule cannot upon the ultimate be invoked in legal question, guid- this, such as in ed only by general instructions, experts technical would in have been used to interpret dispense effect and specific clarify factual de- structures, operations, and terminations functions of called for in Graham as a prior art in predicate for the suit. court’s See Wol determination of ens v. F.W. Woolworth legal question of obviousness. F.2d 983 We hold (7th Cir.1983); Press, the procedure and Street instructions Inc. v. utilized im- LaSalle Henderson, Inc., McCormick & permissibly allowed the jury to be the final (7th Cir.1971). patent case, arbiter of In a legal issue of as in patent validity. other, any regard due given This must be constitutes reversible error. jury’s opportunity to judge the credibility V of the witnesses and to appraise the signifi cance of conflicting testimony. Reese v. Having concluded that the district court Elkhart Welding Works, and Boiler Inc., error, committed reversible the question re- (7th F.2d Cir.1971). mains whether remand for a new trial is the appropriate disposition. Dual, Citing addition, In Sears’ reliance on Dual is Sears contends that the question misplaced; the record in Dual revealed no validity one of law for this court to subsidiary disputes, factual a circumstance decide; moreover, argues, Sears permitted this court to apply the legis- in suit and the art are complex lative standard to the uncontradicted facts. technical, highly and easily are understand- Conversely, III, as demonstrated in Section able from the drawings and descriptions in supra, numerous subsidiary factual disputes the documentary evidence.25 Sears also ap- were present in this case. It remains a pears suggest proce- that the erroneous mystery to this court how these factual dure utilized trial which re- disputes may have been resolved by sulted in “all verdicts, but worthless” jury part or what actually Graham played in militates favor of determination in the decision of this case. The procedure court of the legal issue of validity. utilized by precludes the trial court us from confidently presuming that these factual Although, from the record we disputes were resolved in favor of Roberts. us, have before might able, we be after reviewing and weighing evidence, This court has long eschewed examina- arrive at what we consider to be the correct tion of the of obviousness in a decision on anticipation obviousness, we factual vacuum. An early expression of facts, have to find certain as well as this court’s expression” desire that “verbal determine apply the law. We believe given to each analytical step mandated judicial that the dispute resolution system by Graham can be found Cloud v. Stan- established by our Constitution should not dard Packaging Corp., 376 F.2d 384 be infringed by the ad hoc Cir.1967). shortcut of dis The Cloudcourt refused imply pensing with trial judge jury. light the Graham findings the district court’s trial, arguing “intrinsically 25. At anybody for introduction of a for hard to understand drawing device, depicting the Wilson certainly laymen.” Sears’ drawings counsel stated that mechanical are general POSNER, conclusion that the defendants had Circuit Judge, with whom their carry proving failed to burden ESCHBACH, Judge, Circuit joins, concur- valid invalidity presumptively pat- ring dissenting. case, the ents in suit. In that evidence was agree I that the judgment for Roberts of the uncontradicted comprised explana- agree cannot stand and I also patents by tion of a number of art one method which questions pertain- of fact expert suggested witness. This court ing validity of Roberts’ were “perhaps” it could make the deter- validity trespassing upon put mination “without to the jury was incorrect. But I think Id. at 391-92. Nev- finding.” area of fact is obvious as a matter of law and ertheless, complicated even in those less cir- therefore that the case should not be re- cumstances, we held it was sounder for the manded for a new trial but ended now with initial determination to be made the trial complaint. order to dismiss the here, court. If we undertake to do it all no (see A socket wrench has two parts Fig- court the parties remains where can obtain 1): ure person using shaft which the Id. at 391. review as a matter right. grasps (labeled the wrench and turns “10” We see no alternative but to remand this 1), in Figure (16) and a detachable socket case to the district court for a new trial in grips the bolt that the wrench is opinion. accordance with this we Nothing have said is intended to foreshadow the turning. Usually the wrench comes with a final result to be reached in this case on the number of sockets of different size so that a merits. single wrench can be used to turn bolts of party

Each shall bear its or his own costs. different width. principle out, The of the socket wrench is not fall because its greater diameter is alleged new. The novelty of the Roberts than the ring’s.) part of the ball that mechanism, is in the Fig- shown in protrudes (24) outside the ring lying in a ure for releasing the socket when depression in the inner wall of the socket user of the change wrench wants to (not sockets. in Figure 2), shown thereby holding (22) The knob at the is the top pushbutton the socket onto the wrench. If you press (also 22) on the back of the head of the the pushbutton, this will force the pin down Figure wrench in push- Notice that until space (26) the hollow in it is next to this, button is not depressed. ball, the locked weight of the socket will position, the pin (20) to which the pushbut- then force the ball space. into that There ton is attached is a little pressing (18) ball will nothing holding now be the socket to against, and partially through, ring wrench, and the socket will fall of its wall (The of the mechanism. ball cannot own weight.

“patent monopoly” is a clue. A patent en- its owner monopolize ables produc- tion the things in which the patented idea is embodied. deny To pro- effect, tection has this the position that a footnote in the majority opinion attributes chief of the new patent ap- peals is—with all due respect —to bury one’s head in the patent sand. A excludes others using thé patented invention except on the terms set by the patent owner. If the invention is a valua- ble one he will charge be able to a substan- tial to royalty manufacturers who want to it; usé by increasing the cost of manu- quick-release This is the Roberts mecha- facture the royalty may well result in high- nism. It was a huge commercial success— er to prices consumers and a output lower though have owed a lot to Sears’ of the product manufactured than if the promotion marketing of it —because it invention were freely available anyone to changing enabled sockets with one hand. Scherer, who wanted to use it. See Indus- By holding the wrench face downward and trial Market Structure and Economic Per- pushing the pushbutton your with thumb (2d formance 1980); ed. Stigler, you drop can off the socket attached to the Organization The Industry (1968). 123-25 wrench; by keeping pressed button This is not to that no say patents should down you can insert the wrench into a be granted. An invention might not be different socket simply by pressing (not soon, made so anyway) unless the in socket; head of the wrench down onto that ventor get patent; could for he might not can you then lock the socket to the be able to recoup his investment wrench simply by releasing your thumb. invention if could anyone use it without been,

Successful it has though the Rob- charge, and therefore might have no incen patent erts is if subject invalid “the matter tive to make the investment in the first as a whole would have been at the place. obvious In such granting patent a case time the invention was made a person would increase rather than decrease the having skill in the ordinary art to which output of useful things. My point said pertains.” matter 35 U.S.C. the costs patent as well as benefits of 103. The word “obvious” in the § statute is protection are relevant to deciding which not legal obvious. Its meaning must be inventions patentable. should be The bal policies derived from the inform the ance tips against protection when the in patent statute. The purpose allowing vention is the sort that likely was to be people patents to obtain is strictly made, soon, utilitari- and as even if no one could an —to create incentives to invent useful patented have it. In such a patent case things. patent “The monopoly was not de- protection would have no good incentive signed to secure to the inventor his natural effects but would have the usual bad mo right Rather, in his discoveries. it was a nopoly effects. All this is well recognized reward, inducement, bring forth new in the law. Supreme The Court knowledge.” Graham v. John Deere Graham referring Thomas Jeffer 9,1, 684, 689, 383 U.S. 86 S.Ct. 15 L.Ed.2d patent policy, son’s views on said it was knowledge new is a social underlying policy Since “the system good, it might seem that no limits should be things ‘the which are worth to the placed on scope or duration of public the embarrassment of an exclusive protection. problem is that patent pro- it, patent,’ put outweigh as Jefferson must side, tection has a dark to which the term the restrictive effect of the limited lifting heavy invented mechanism was problem The inherent monopoly. wrench, like a socket weeding out those that worked means of loads develop some the socket. corresponding disclosed the load with inventions which pat top of a from the mecha- pin protruded the inducement A devised but for 10-11, at pushbutton ent.” 383 at S.Ct. nism much like Roberts’ U.S. to release the old up moved and down concept codi chosen was The means lifting on a new one to load and lock “obvious.” statutory term See fied in sepa- Carpenter Gonzalez and mechanism. The term 11-17, at 690-693. id. at 86 S.Ct. socket wrenches that rately had protec eases in which identifies the of the Roberts the essential elements had to induce invention necessary tion is not was on the although emphasis patent, of mo therefore visit the costs and would function. rather than the release locking no consuming public nopoly on the application a patent had submitted Wilson Kitch has As Professor offsetting gains. wrench almost for a socket quick-release on which the principle “the basic explained, Roberts’, application though identical to a test is based non-obviousness [is that] was not known to Rob- was abandoned and granted for an innova patent should not be application. when he submitted his erts would have been tion unless the innovation absent the developed to have been unlikely applica- and Wilson’s patents The earlier The nonobvious prospect patent.... of a that the basic ideas embodied tion show effort, necessarily an ness test makes familiar ones. The patent Roberts’ were one, innovations to sort out those awkward could be locked to a idea that a socket a developed pat not absent that would be ball device and that pin wrench with a and Kitch, Deere ent Graham v. John system.” pin to make the pushbutton a could be used Patents, Sup. for New Standards Co.: in another was release one socket and lock it is true that if the Ct.Rev. 301. Now was a thing not new. The new device invention, thing the sort of though smoothly enough ideas worked which these to take much ordinarily expected would be with changed easily allow sockets to be make, was made in a flash time and toil to contribution, one hand. That was Roberts’ it genius, of this does not make “obvious.” patent protection only but it was entitled to sentence of That is the force of the last unlikely except by to be induced if it was neg not (“Patentability section 103 shall and it was not. promise monopoly; of a inven by atived the manner in which the that there was a market for Everyone knew made”), explained tion was in the Revis knew everyone wrench and quick-release er’s Much time and toil have Note. pin wrench —the the elements of such a where the spent getting point been place the socket in and the holding ball for struck, any and in spark genius of could be the old socket and releasing pushbutton to do encouraged event should not be people locking question in the new. It was making work it a condition of drudge with a workable embodiment coming up But if a court obtaining patent protection. ideas, special a task for which no these an invention for which a is thinks training, expensive equipment, prolonged or as soon sought would have been made being necessary. were Nor is testing refining or almost as as it was made even if soon Roberts anyone except the case that laws, no then it must there were but that things would have needed all these pronounce the invention obvious was a and could make genius Roberts patent invalid. in hu- invention without the investments that others would physical capital man or quick- here. Roberts’ We should do that make. In the circumstances have had to simplicity release mechanism is itself and as record, the effect probable disclosed essential elements expect one would protection overcompensate is to was in- already were well known when it inventor, re- drawing excessive thereby al- Wendling vented. A man named had making improve- sources into the of minor ready patented pin the use of a and ball wrench; imposing unnecessary ments and costs onto a his device hold a socket community. on the monopoly had only pushbutton. lacked DePew judges why understand the court is many lawyers unwilling I know that all, use it to decide this case once language repulsive. find the of economies and for rather than remand for another policies given shape Yet the that have trial. I think appellate courts are sometimes too quintessential^ statute are eco hesitant to bite the bullet and nomic, language dispatch of economics is litigation gone that has on for too long. language therefore the natural in which to This is such a And, case. articulate test for obviousness. I think respect,

with all due do not All agree question of us that the ultimate majority very has succeeded well in articu of obviousness is for the not the jury, re lating opinion an alternative test. Its jury’s and that the role is limited to decid- general propositions cites a number of ing fact subsidiary questions, who- meaning about the of obviousness. These variety. Mfg. did-what-to-whom Dual & propositions quite unexceptionable are but Industries, Inc. v. Burris Engineering, general principles as is so often true the (7th Cir.1980) (en banc). F.2d 662-64 disagrees that no one with do not decide the The ei- such here is whether example concrete case. Consider for ther Carpenter’s design Gonzalez’s opinion statement majority allow socket to be released with one not to be with obvi “Simplicity equated is hand, differently or stated whether once I have no quarrel ousness.” this state is pushbutton pressed gravity will do ment, I would if the statement were though (The the rest. reason there is uncertainty “Simplicity probative obviousness.” on this score is that neither wrench was interesting But it is to note that in the case placed in the record. The Gonzalez wrench majority opinion proposi cites for the was never even A proto- manufactured. tion, Skee-Trainer, Co., Mfg. Inc. v. Garelick type of the wrench Carpenter may have 895, (8th Cir.1966), 361 F.2d 899 been manufactured —the record is unclear ground was held invalid on the of obvious point on the the wrench was never —but device ness. The was a water-ski market.) Logically, sold on the before we have ing aid which the court held should question can decide whether this requires a person having ordinary been “obvious to properly that a instructed be allowed though “nothing skill in the art” even com do, to take a whack at this case before we parable to it been con previously ha[d] we must decide whether Roberts not My explain structed.” Id. brethren do would be valid if the found that nei- device, why if that mechanical de Carpenter design ther the nor the Gonzalez vices held to be obvious as a matter of law would have allowed a user to release sock- case, in the Graham or the inventions held ets with one hand. If Roberts’ nonpatentable to be because of obviousness assumption, would not be valid even on this opin in other cases cited in the majority’s futility. a new trial would be an exercise in ion, Republic Schlage such as Industries v. say The court does not whether it would Co., 963, (7th Cir.1979); Lock 592 F.2d 975 it not be valid. I believe would be. The Elec., Inc., Popeil Bros. v. Schick 494 F.2d whether the Roberts wrench not 162, (7th Cir.1974); Shelco, 167 Inc. v. Dow something that had been was identical to Co., 613, (7th Chem. 466 F.2d 616-17 Cir. earlier, whether the advance invented but 1972), Inc. v. Deep Welding, Sciaky art it made over the was suffi- Bros., 1227, 1239(7th Cir.1969), are ciently great patent. to deserve And in obvious, the Roberts wrench is not. we must making judgment consider con- majority opinion Because the both Gonzalez, just Carpenter but Wen- fines to forth generalities setting itself DePew, All five had the dling, and Wilson. its not apply test of obviousness and does essential elements of the Roberts wrench. case, its test to the facts of this I am not wrenches Carpenter Gonzalez clear whether its test differs other than identical completely indeed have been their char- operating own. But whether it is the Roberts wrench in verbally my acteristics; but, worst, test, they at were clumsi- the same test or a different a better test, er did not lend themselves to test or a worse I am at a loss versions that 1348 ment, Resolving 1637, sockets with one hand. 72

changing Mich.L.Rev. 1645 favor, all issues in disputed factual Roberts’ implies This and we have that “the stated all one can is that he used a familiar say function of en banc hearings is not to re- a' wrench that technology alleged make was easi- view errors for the losing benefit of er to use with one than predeces- litigants.” Rosciano, hand United States 499 sors. This was “the work of a skillful me- Cir.1974) curiam). F.2d (per words, chanic” rather than of an inventor. Hotch- In other rehearing en banc should Greenwood, (11 How.) 248, kiss v. (in U.S. all but the rarest circumstances) be re- (1851); Republic 13 L.Ed. 683 Indus- served for cases precedential that have sig- Schlage nificance, tries v. Lock supra, F.2d at which this case does not. For we jurisdiction have our. lost over ap- peals except tiny for the handful of cases in Obviously majority must attach more which the appeal notice of was filed before weight than I to the question easy do how 1, 1982, October but in which no decision would be to release sockets with one hand yet has been rendered. The Federal Cir- wrench, with a or a Carpenter Gonzalez if cuit, which has acquired jurisdic- exclusive such a wrench existed. But I find it partic- tion patent appeals, has announced that ularly agree difficult the question it will not be bound decisions of the warrants a new trial in a litigation already other circuits. Corp. South v. United so dated and stale as this one began is. It States, (Fed.Cir.1982) F.2d years ago, almost 15 and if the (en banc). panel So the decision in this judgment entered the district court on unsound, even if would still have been remand appealed from this court is the ap- harmless, because it would have had no peal will not come back to us go but will weight precedent; Judge Wood’s another the new United States Court painstakingly crafted en opinion, banc Circuit, of Appeals for the Federal which no will, months, work many weight have no doubt will have its own ideas about as precedent either. I respectfully suggest interesting (I speculate case. will not on that we cannot afford judicial to waste applicability law of the case resources this fashion. doctrine situation, in this unusual or on whether if it applicable is it any would have

bite in view of the lack of definiteness in

the legal standard which this court has laid opinion.)

down This could turn into a 20-year lawsuit over a that has now Gary WALDRON, Plaintiff-Appellant, expired. We have too much protracted liti- gation in the federal courts. Three appeals Joseph McATEE, capacity in his as Chief this case are enough. Indianapolis of Police of the Police De- Age just one Iwhy reason also believe partment, Hudnut, capaci- William in his inappropriate prolong ty Mayor City Indianapolis, suit by agreeing to rehear appeal en County City-County and the Marion banc. This grants circuit en rehearing banc Council, Defendants-Appellees. very rarely; this is our nineteenth only en No. 83-1358. banc decision in the last five years, an aver- age of fewer year. than four a The basic United of Appeals, States Court reason for this parsimony is that a rehear- Seventh Circuit. ing en imposes banc a heavy burden on an Argued Sept. 1983. already overburdened court. heavy “The Decided Dec. costs procedure of the en banc in terms of court time litigant expense should es- Rehearing Rehearing En Banc tablish a strong presumption against its use 16, 1984. Denied Feb. cases, most rebuttable by clearly Note, demonstrable benefits.” En Banc Re-

view in Federal Circuit Courts: A Reassess-

Case Details

Case Name: Peter M. Roberts v. Sears, Roebuck & Co.

Court Name: Court of Appeals for the Seventh Circuit

Date Published: Feb 22, 1984

Citation: 723 F.2d 1324

Docket Number: 82-1886

Court Abbreviation: 7th Cir.