657 F.2d 535 | 3rd Cir. | 1981
Lead Opinion
OPINION OF THE COURT
This appeal requires us to decide the proper role for the patent law concept of “synergism,” the proposition that to serve as the subject of an enforceable patent a combination of known elements must somehow exceed the sum of its parts. Additionally, we are faced with questions regarding
I.
On August 27, 1974, the United States Patent Office issued Patent No. 3,831,502 (“the ’502 patent”) to plaintiff Rengo Co., Ltd., as assignee of the named inventor, Masatero Tokuno. The patented apparatus includes portions of a “corrugator,” a machine that manufactures the three-ply paperboard from which the familiar cardboard box is made.
Production of corrugated paperboard begins with the introduction of three webs of paper into the machine. The machine initially corrugates (i. e., flutes) one web, and the flutes of the opposite surfaces of this sheet are glued to the two flat webs of single-ply paper. The resulting three-ply web then passes over a heating bed where the glue is set and dried. The paperboard next travels to the “slitter-scorer” complex. This series of instruments first slits the web along the running direction into two or more bands of selected width, and then, in the operation known as “scoring,” imposes longitudinal creases on each of these strips in order to facilitate the subsequent construction of the boxes. Finally, the web passes to a rotary shear that cuts across the paperboard, producing box blanks of predetermined length.
By changing the pattern of slitting and scoring, a single corrugator can manufacture cardboard boxes of various sizes and configurations. Moreover, a corrugator may be equipped with more than one slitter-scorer unit. As a result, while one unit is in operation the other is accessible for adjustment to accommodate the next run. Before the development of the subject invention, an operator of a corrugator who desired to effect an “order change,” /. e., a change in the slitting and scoring pattern, would use the rotary shear to make a transverse cut in the paperboard web. The portion of the web downstream of the transverse cut would pass through the slitting and scoring rolls then in operation. When the old order was completed, the portion of the web behind the point of severance would proceed to the slitting and scoring rolls arranged in the desired new pattern. An order change effected by this method requires the operator to stop the corrugator completely, or at least to slow the running of the paperboard web through the machine. A decrease in the productivity of the machine thus inevitably attends an order change.
The subject matter of the patent in suit was designed to improve the efficiency of conventional corrugators by performing the slitting and scoring operation without suspending or reducing the running speed of the web during an order change. The patented apparatus comprises a conventional rotary shear, located upstream of two conventional slitter-scorer units. The combination also contains a movable feeding plate that can direct the web to an upper path, which leads to one of the slitter-scorer units, to a lower path, which leads to the other slitter-scorer unit, or to an intermediate path, which flows between the two slitter-scorer units. To effect an order change, the rotary shear makes a single transverse cut in the web, and the feeder plate instantaneously diverts the leading edge of the severed web to the slitter-scorer not previously in use. The difference in conception between conventional corrugators and corrugators equipped with the patented device can be put simply: In the conventional device, the paperboard web travels along a single pathway; during order change, a new slitter-scorer unit moves into the path of the board to engage the web. The patented device, by contrast, changes the path of the web to meet the new slitting and scoring unit.
Rengo initially developed a corrugator capable of instant order change in Japan. It installed machines employing the new patented apparatus at two of its Japanese plants in January 1972, and filed Japanese
During the middle 1970’s, the Langston Division of defendant Molins Machine Company, in response to market pressures and consumer demands, set about to develop a corrugator capable of performing instant order change. In 1976, two representatives of Molins visited Japan and while there observed the operation of a Rengo corrugator. In December 1977, Langston began development of corrugator apparatus similar to the device which Rengo had already patented. Like the Rengo mechanism, the Langston version achieved instant order change by diverting the flow of paperboard from one set of slitters and scorers to another. The principal difference between the two devices is that Langston employs only two flow paths, or “board lines,” whereas Rengo utilizes three. Langston offered its instant order change system for sale in early 1978, and installed a prototype later that year at the Louisville plant of the Mead Corporation. Another corrugator employing the Molins double board line system went into commercial operation in December 1979.
A.
In August 1978, Rengo filed a complaint in the District Court for the District of New Jersey, alleging that Molins had infringed claims 1 and 24 of the ’502 patent. In its answer, Molins denied infringement and requested that the court declare the ’502 patent invalid and, in any event, not infringed. In addition, Molins asserted by way of a counterclaim that Rengo had violated the antitrust laws.
After a four day trial, the district court, finding the ’502 patent invalid, entered judgment in favor of Molins. The court recognized that an inquiry into validity requires comparison of the patented device with the state of the art before the invention. In this case, the district court, in order to make the comparison, had first to determine whether the Japanese filing date, as opposed to the American filing date, should be considered the date of invention. After resolving this issue in favor of Rengo, the court nonetheless went on to hold the ’502 patent invalid. The court’s disposition of this issue rested to a considerable extent on its finding that the patented device did not demonstrate a “synergistic result.”
Although an invalid patent cannot be infringed, the court next considered Rengo’s infringement claims, reasoning that a resolution of these questions might expedite final disposition of the case if the court of appeals reversed the district court’s ruling on validity. Finding that the Molins and Rengo machines were equivalent in means, operation, and result, the court held that the ’502 patent, if valid, was infringed. Finally, the court considered and dismissed Molins’ antitrust claim.
Rengo appeals from the court’s finding that the ’502 patent is invalid, while Molins cross-appeals from the court’s determination that the patent, if valid, was infringed.
II.
Initially, we confront a potential barrier to our jurisdiction. Rengo predicated its complaint on a theory of infringement, as that term is defined in 35 U.S.C. § 271(a): “Whoever without authority makes, uses or sells any patented invention, within the United States during the term therefor, infringes the patent.”
Without deciding whether the district court had jurisdiction over Rengo’s original cause of action,
The actual manufacture, use, or sale of an allegedly infringing device is not a condition precedent to a suit seeking declaratory relief against the holder of the patent. In order to maintain an action, it is sufficient that the potential infringer have the “immediate intention and ability to practice the invention.”
In the present case, no jurisdictional impedimént barred adjudication of Molins’ request for declaratory relief concerning patent validity and infringement. By advertising and soliciting orders, Molins manifested a “definite intention” to manufacture the accused device. Moreover, Molins’ installation of an instant order change system in November 1978, just two months after it filed its original answer and counterclaim, establishes its “apparent ability” to produce a possibly infringing device. In addition, Rengo’s initiation of an action for infringement left no doubt that Molins would be forced to defend itself if it continued to manufacture and sell the accused machinery.
Notwithstanding the question of jurisdiction over the original complaint, then, the district court had jurisdiction over the Molins counterclaim. And because the counterclaim raised the same issues that the complaint presented — whether the ’502 patent was valid and, if valid, whether it would be infringed by the Molins device — the court had power to decide those issues. Further, a jurisdictional defect in the complaint will not preclude adjudication of a counterclaim over which the court has an independent basis of jurisdiction. As we stated in National Research Bureau, Inc. v. Bartholomew, 482 F.2d 386, 388-89 (3d Cir. 1973) (per curiam): “Once an issue with independent subject matter jurisdiction is before the court and jurisdiction over the parties has been perfected, it must be allowed to proceed to a conclusion pursuant to the rules of civil procedure like any other routine federal claim . .. [w]here, as here, jurisdiction is independent, the counterclaim must be allowed to proceed without
III.
The most significant question in this case is whether the district court tested the ’502 patent against the appropriate standard. Rengo argues that the court, in requiring a demonstration of “synergism,” improperly supplemented the statutory criteria for patent validity. To resolve this issue, we first must ascertain whether the synergism test ís mandated either by statute or by recent Supreme Court decisions. After examining the relevant precedents, we will consider whether such a test, even if not required, might nonetheless comport with modern principles of patent jurisprudence.
A.
Between 1790 and 1952, the American patent statutes expressly referred to only two prerequisites to the grant of a patent: novelty and utility.
For the next one hundred years, elaboration of the invention requirement devolved on the judiciary, as the patent statute continued to embody the dual standard of novelty and utility.
Partially in response to the judicially created “negative rules of invention,”
In Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the Supreme Court established a procedure for determining whether Section 103 is satisfied. While the Court acknowledged that patent validity is a question of law, it also observed that the Section 103 issue “lends itself to several basic factual inquiries:”
Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art maintained. Against this background, the obviousness or non-obviousness of the subject matter is determined.
Id. at 17, 86 S.Ct. at 694. In addition to the three factors to be accorded primary significance, such “secondary considerations” id., as commercial success, long felt but unsolved needs, and failure of other attempts to develop a comparable device, might be relevant as indicia of obviousness, id. at 17-18, 86 S.Ct. at 693-94.
Significantly, the Supreme Court in Graham seemed to regard Section 103 as abolishing the judicially fashioned “negative rules of inference,”
In the ease at hand, the district court adhered to the Graham decision by identifying the scope of the prior art, the differences between the art and the '502 patent, and the relevant level of skill. The court, however, appeared to supplement the Graham analysis with the “negative rule” that applied to. combination patents before the adoption of Section 103. The court introduced its discussion of Section 103 by observing that “additional aspects of nonobviousness” come into play when a combination patent is at issue. It identified these “additional aspects” as a requirement that the device produce a “synergistic result” in which “the whole in some way exceeds the sum of its parts.” The court concluded that the ’502 patent could not survive scrutiny under Section 103, inasmuch as “each element of the combination performs in the same manner and with the same result as in the prior art machines.”
Rengo maintains that the district court, by imposing a requirement of “synergistic result,” revitalized one of the “negative rules of invention” discredited in Graham. In so doing, Rengo argues, the court subjected the ’502, patent to. an unduly rigorous standard, and the resulting finding of invalidity cannot stand. We agree with Rengo that Graham establishes the standards gen
B.
Notwithstanding Graham, the Supreme Court, in two more recent decisions, has resorted to language which evokes the rule of Hicks v. Kelsey and A&P Tea Co. v. Supermarket Corp. In Anderson’s-Black Rock Inc. v. Pavement Salvage Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969), the court struck down a claim that combined a radiant heat burner, a bituminous paving machine, and an asphalt shaper apparatus mounted on the same chassis, each of which was taught by the prior art. The Court observed that Graham established the guidelines for assessing obviousness, and, applying this analysis, concluded that “the combination was obvious to one with ordinary skill in the art.” Id. at 60, 90 S.Ct. at 307. But the Court also commented:
A combination of elements may result in an effect greater than the sum of several effects taken separately. No such synergistic result is argued here. It is, however, fervently argued that the combination filled a long felt want and has enjoyed commercial success. But these matters “without invention will not make patentability.”
Id. at 61, 90 S.Ct. at 308 (quoting A&P Tea Co. v. Supermarket Corp., 340 U.S. at 153, 71 S.Ct. at 130).
Despite the allusion to “synergistic result,” we do not understand Black Rock to supersede or to supplement Graham. To the contrary, the Supreme Court’s reference to and application of the Graham test constitutes a reaffirmation of that decision. The Court’s resort to synergism language is, we believe, best interpreted “merely to note the advent of a phenomenon which may emanate from a combination claim, without any indication by the Court that the phenomenon must be present in every case to satisfy the requirements of Section 103.”
In Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976), the Supreme Court again considered the validity of a combination patent. As in Black Rock, the Court reiterated its fidelity to the Graham test, id. at 280, 96 S.Ct. at 1536, and, after analyzing the scope of the prior art, concluded that the particular use before it
In contrast to the district court, we doubt that the Supreme Court’s recent decisions impose distinctive barriers to the validity of combination patents.
C.
While Black Rock and Sakraida do not compel adoption of a synergism requirement, neither do these decisions, by their terms, preclude such a result. Independent of these precedents, sound arguments counsel against incorporating into the patent law a special test for combination patents. Section 103 itself does not discriminate among various types of patents; its requirements, instead, apply to all applications, regardless of their subject matter. This uniformity is not accidental, for Congress, in enacting Section 103, intended to replace the mosaic of “negative rules,” many of which could be applied to only a limited range of patents, with a single standard of non-obviousness.
[T]he defendant argues that the supposed invention is no more than a substitution of materials familiar to the art in the same uses; an aggregation of which each part performs what it did before. We may concede as much arguendo, for the same may be said of every invention. All machines are made up of the same elements; rods, pawls, pitmans, journals, toggles, gears, cams, and the like, all acting their parts as they always do and always must. All compositions are made of the same substances, retaining their fixed chemical properties. But the elements are capable of an infinity of permutations, and the selection of that group which proves serviceable to a given need may require a high degree of originality. It is that act of selection which is the “invention” and it must be beyond the capacity of commonplace imagination.
B. G. Corp. v. Walter Kidde & Co., 79 F.2d 20, 21-22 (2d Cir. 1935).
Assuming the definitional hurdles can be overcome, synergism, whether conceptualized as a characteristic of individual parts or of the product they cooperate to produce, can rarely, if ever, exist. In virtually every mechanical patent, the constituent parts will perform their known and expected functions, and the possibility that the elements will function differently in combination than they did separately is correspondingly remote.
Additionally, we agree with the Seventh Circuit’s observation in Schlage Lock that the synergism standard contravenes important objectives of patent protection. By looking exclusively to the functioning of the individual components after combination, the approach is premised on “the assumption that it is always obvious to take known elements and combine them.” 592 F.2d at 971. But the selection of elements may itself be non-obvious and therefore inventive. Focusing on the performance of elements after combination, to the exclusion of the obviousness of making the combination, thus seems inconsistent with Section 103, which establishes as the standard of patent-
D.
Because the synergism requirement is neither mandated by the Supreme Court nor commended by independent considerations, we decline to adopt it as a prerequisite to the validity of a combination patent. Instead, we regard the three-part test of Graham as applicable to combination, as well as to other patents: to ascertain the non-obviousness of a patent, a court should look to the prior art, to the differences between the claimed invention and the prior art, and to the level of skill in the industry, with appropriate weight accorded to “secondary considerations.” To the extent that the district court deviated from the Graham analysis by measuring the ’502 patent .against the standard of synergism, it committed error. Moreover, our review of the Court’s opinion does not persuade us that the error was harmless.
As noted above, the court recited various of the maxims traditionally associated with synergism: the whole must in some way exceed the sum of its parts, and at least some elements of the combination must perform in a novel or unpredictable manner. While a mere reference to synergistic aphorisms might not prejudice the holder of a patent, we are convinced that the district court, at least to some extent, substituted synergism for the Graham analysis. Specifically, it deviated from Graham by failing to consider adequately whether the specific combination of elements before it — each, admittedly, performing a known function— was obvious at the time of invention. For example, the court acknowledged that the prior art did not teach the placement of the diverter plate upstream of the cutting and grooving tools. In inferring that the development of a diverter plate located between the rotary shear and slitter-scorer units was not an inventive contribution, the judge merely recited the prior art and then stated that each element of the new combination performs its old function. The court did not explain what made this specific combination of known elements obvious to one skilled in the art. Moreover, its injection of synergism resulted in an additional departure from the Graham analysis. In declining to look to “secondary considerations” such as the failure of Rengo’s rivals to develop an adequate corrugator, the court properly noted that these factors cannot revive a patent already adjudicated unsatisfactory by Section 103 standards. But in this case, the determination of invalidity that foreclosed secondary considerations rested on the synergism standard. In short, we find that concepts of synergism so permeated the trial court’s ruling on patent validity that we cannot sustain that holding.
Occasionally, a reviewing court, when presented with a finding of patent invalidity premised on incorrect legal standards, will proceed to decide the validity issue on its own, without remand to the trial judge.
IV.
Two issues touching on validity, both of which the district court resolved in favor of Rengo, remain. The first concerns the proper date for ascertaining the state of prior art; the second, which is closely allied, concerns the formal adequacy of Rengo’s application for a patent. Although we have already determined that the district court’s judgment must be vacated, the resolution of these questions will affect the scope of the inquiry on remand. Accordingly, we find it appropriate to address them at this time.
A.
Although the statute indicates that the obviousness of an invention should be evaluated in light of the art which existed “at the time the invention was made,” in practice the reference point generally has been understood as the date the inventor filed an application with the Patent Office. Eltra Corp. v. Basic Inc., 599 F.2d 745, 752 n.10 (6th Cir. 1979); U. S. Expansion Bolt Co. v. Jordan Indus., Inc., 488 F.2d 566, 568 n.3 (3d Cir. 1973). Section 119 establishes an exception to this general rule, however. If an inventor applies for a patent in a foreign country, and files an application in the United States within one year, the American application “shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country.” Consequently, an American application which falls within Section 119 will be judged by reference to the state of the art as it existed on the date of the foreign application, rather than on the later date of the domestic filing. The difference is potentially crucial in the present case. During the interim between the filing of applications in Japan and the United States, the Patent Office granted Patent No. 3,831,929 (the “Hellmer patent”), which discloses all the components of the Rengo patent, and in the same arrangement. Rengo concedes that if the Hellmer patent is considered prior art, the Tokuno corrugator does not cross the non-obviousness threshold, and the ’502 patent must be adjudged invalid.
The parties agree that a patent application will receive the priority of Section 119 only if the foreign application satisfies the requirements of Section 112. Relevant to this case is the so-called “enablement” provision of Section 112: a patent application must “contain a written description of the invention, and of the manner and process of making and using it, ... as to enable any person skilled in the art to which it pertains ... to make and use the same.” Although the parties do not contest the point, this Court has never considered whether Section 119 incorporates the requirements of Section 112. Consequently, a brief examination of this issue must precede resolution of whether Rengo is entitled to the filing date of the Japanese application.
In the leading opinion on this subject, the Court of Custom and Patent Appeals decided that a foreign application must comply with the enablement provisions of Section 112 if the inventor is to enjoy the priority benefits of Section 119. Yasuko Kawai v. Metlesics, 480 F.2d 880 (C.C.P.A.1973). The court recognized that the language of Section 119 is not so unambiguous as to foreclose the contrary result. Because the statute provides that the American application, if preceded by a foreign filing “shall have the same effect as the same application would have if filed in this country” on the date of the earlier application, a question arises concerning the referent of the phrase “same application.” If it relates to the United States application, then the Ameri
Although resort to the statutory language is unavailing, the Section’s relationship with the body of American patent law assists the construction of Section 119. Section 104, 35 U.S.C. § 104, provides generally that an inventor cannot establish a date of invention by proving acts done in a foreign country, unless he falls within Section 119.
We find the Kawai syllogism persuasive.
Applied to the present case, the Kawai rule directs that Rengo may assert the Japanese filing date, and thereby exclude the Hellmer patent from the prior art, only if the Japanese application meets the disclosure standards of Section 112. The Japanese application is identical to the American in all relevant respects save one: it does not disclose circuit diagrams, included in the American applications, which explain how the action of the rotary shear is interrelated with the movement of the web diverter. Mr. Tokuno did not invent the specific circuitry disclosed in the ’502 patent, and did not claim it as part of the invention.
In considering the adequacy under Section 112 of the Japanese filing, the district court noted that the enabling requirement is directed, in the terms of the statute, to a “person skilled in the art,” and demands that the inventor describe the device in terms sufficient to enable one skilled in the art to make and use it. There is consensus in the present case that the appropriate level of skill in the art is very high, and is characterized by a person with an engineering degree who is thoroughly familiar with the design, construction, and operation of
Molins contends that the district court misconstrued the disclosure requirements. According to Molins, a court may rely on skill in the art to interpret what is disclosed in the application, but the court may not speculate about what a skilled person could infer from what is disclosed. Molins does not dispute that a person sufficiently skilled could, after examining the Japanese application, infer that a particular type circuitry would be required for operation of the corrugator. Rather, it maintains that the failure to disclose, without more, precludes compliance with Section 112, thereby removing Rengo’s American application from the protective harbor of Section 119.
We find the Molins’ interpretation of Section 112 unduly parsimonious. It is axiomatic that no description, however detailed, is “complete” in a rigorous sense. Every description will rely to some extent on the reader’s knowledge of the terms, concepts, and depictions it embodies. Thus, an understanding of any description will involve some measure of inference. The Court of Customs and Patent Appeals recognized this principle in In re Wiggins, 488 F.2d 538, 543 (C.C.P.A.1973), when it said: “Every patent application and reference relies to some extent upon knowledge of persons skilled in the art to complement that disclosed in order that it be ‘enabling’ within the meaning of § 112.” See also In re Bode, 550 F.2d 656 (C.C.P.A.1977) (“One skilled in the art would be expected to have sufficient basic knowledge to construct such means, the structure of which would be simple.”). As Bode makes clear, skill in the art can be relied upon to supplement that which is disclosed as well as to interpret what is written.
The Bode interpretation of the enabling requirement has deep historical roots. Nearly one century ago, the Supreme Court, in Loom Co. v. Higgins, 105 U.S. 580, 585-86, 26 L.Ed. 1177 (1882), similarly construed the predecessor to Section 112:
If a mechanical engineer invents an improvement on any of the appendages of a steam-engine, he is not obliged, in order to make himself understood, to describe the engine, nor the particular appendage to which the improvement refers, nor its mode of connection with the principal machine. These are already familiar to others skilled in that kind of machinery. He may begin at the point where his invention begins, and describe what he has made that is new, and what it replaces of the old. That which is common and well known is as if it were written out in the patent and delineated in the drawings.
More recently other courts have expressed similar views. In Trio Process Corp. v. L. Goldstein’s Sons, Inc., 461 F.2d 66, 74 (3d Cir.), cert. denied, 409 U.S. 997, 93 S.Ct. 319, 34 L.Ed.2d 262 (1972), for example, we observed that “patent specifications need not be so detailed as production specifications,” and intimated that requirements of detail are less rigorous with respect to items that are not “a critical part of the invention,” id. at 74 n.24.
Applying these principles, we cannot say that the district court applied an incorrect standard of law. The circuit diagrams which Tokuno omitted from the Japanese application were not of his invention. Although the corrugator could not operate without circuitry, Bode and Higgins indicate that a patent need not specify those items which are not part of the invention, and which a person skilled in the art could be expected to understand. The district court, therefore, was correct in declining to find the Japanese documents inadequate for failing to disclose the circuit diagrams, and in evaluating them instead to determine whether a person with the requisite skill could infer from them a method for con
B.
Virtually inseparable from the enablement provisions are two additional prerequisites embodied in Section 112. The first paragraph of the Section states that “the specification shall contain a written description of the invention,” while the second paragraph stipulates that “the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant reports as his invention.” Molins asserts that the '502 patent falls short of both these standards, known respectively as the “description" and “definiteness” requirements. Molins bases its argument on claim 1 of the ’502 patent, which recites, in pertinent part, a “means associated with the feeding guide plate for aligning said feeding guide plate with the lower guide plate, with the intermediate guide plate and with the upper guide plate.” This claim, Molins contends, requires a “means” — i. e., a diverting mechanism — that moves between three different positions. The specifications, however, disclose that the diverter moves between only two positions, one aligned with the upper flow path and the other with the lower flow path. Molins urges that this variance is fatal to Rengo’s asserted compliance with the description and definiteness elements of Section 112.
The requirements of adequate description and definite claim, though closely intertwined, are analytically distinct. The description requirement is contained in the same sentence as the enablement provision discussed above,
Compliance with the first paragraph of § 112 is adjudged from the perspective of the person skilled in the relevant art. This court has held that claimed subject*551 matter need not be described in haec verba in the specification in order for that specification to satisfy the description requirement . . . although where there is exact correspondence between the claim language and original specification disclosure, the description requirement would normally be satisfied.... The specification as originally filed must convey clearly to those skilled in the art the information that the applicant has invented the specific subject matter later claimed.... When the original specification accomplishes that, regardless of how it accomplishes it, the essential goal of the description requirement is realized.
The purpose of the description requirement is “to buttress the original filing date of the application as the prima facie date of invention,”
Description and enablement apply to specifications; by contrast, definiteness applies to claims. Definiteness means that “the language of the claims must clearly set forth the area over which the applicant seeks exclusive rights.”
In the case at hand, the requirement that the claim be definite presents no serious barrier to patent validity. The ’502 claim, which recites a means for aligning the feeder guide with the upper, middle, and lower flow paths, adequately notifies potential infringers of the scope and function of the claimed invention. Moreover, a relaxed standard of definiteness applies to combination patents. The final paragraph of Section 112 states:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material or acts described in the specification and equivalents.
The recitation in claim 1 of a “means” for aligning the feeding guide appears to comply with the standards of Section 112. While assertion of a “means,” without further specification, is admittedly somewhat nebulous, Section 112 contemplates that a reference to the “means” shall be understood, in connection with a combination pat
We also conclude that the specifications adequately describe the claimed invention. Molins emphasizes the asserted disparity between the recital of claim 1 and the specifications: while claim 1 recites a feeding plate that diverts the movement of the three-ply web and that can be aligned with three flow paths, the specifications describe a diverter that can be aligned with only two flow paths. We think that Molins has adopted an unnecessarily restrictive interpretation of claim 1. The patent claims a “means” for aligning the feeding plate with all three flow paths, but does not indicate that the feeder plate itself must move to each of the three positions. The specifications describe a system for aligning the plate with the middle flow path, even though there is no middle position on the feeding plate itself: the plate moves to the upper position, and a different mechanism, acting upon it, aligns it with the intermediate flow path. This system describes a “means” for aligning the feeder with all three flow paths, thereby removing the ground on which Molins objects to the adequacy of the description of the invention. See United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 713, 15 L.Ed.2d 572 (1966).
V.
After finding the ’502 patent invalid, the district court, mindful of recommendations we have made in the past,
In light of our disposition of the invalidity issue, we decline to review the district court’s rulings on infringement. As indicated above, the court’s invalidation of the ’502 patent must be vacated, but we will remand the case for reevaluation of the patent under the Graham guidelines. If the district court reinstates its ruling that the patent is invalid, and if this decision is upheld on appeal, then there will be no occasion to consider infringement. By declining to review the infringement issue now, we may thus avoid unnecessary resolution of a difficult and complex question. On the other hand, if the district court on remand upholds the ’502 patent, it will presumably, absent some intervening development, adhere to its decision on infringement. Then, on appeal, the infringement issue will properly be before us. But on the second appeal, if there is one, the infringement question will be no different than it is now, and no harm will accrue to the parties by our deferring consideration of the issue until that time when its resolution is necessary to dispose of the case. Moreover, deferral of the issue to a later time will delay final resolution of the dispute only on the assumption that Molins will decline to appeal a district court holding that the ’502 patent is valid. We have no basis for making this assumption. We believe prudence counsels in favor of declining to consider a question whose resolution either will prove unnecessary to a final disposition, or, if
VI.
The judgment of the district court will be vacated, and the case remanded for further proceedings in accordance with this opinion.
. The federal district courts have jurisdiction over suits for patent infringement by virtue of 28 U.S.C. § 1338(a).
. There is authority for the proposition that promoting, advertising, and soliciting orders for a product, as opposed to actual manufacturing, selling, or using it, do not constitute infringement within § 271(a). See Knapp Monarch Co. v. Casco Prods. Corp., 342 F.2d 622, 626 (7th Cir. 1965); Powerlock Floors, Inc. v. Robbins Flooring Co., 327 F.Supp. 388, 390 (D.Del.1971), aff'd, 464 F.2d 1022 (3d Cir. 1972).
. Wembley, Inc. v. Superba Cravats, Inc., 315 F.2d 87, 90 (2d Cir. 1963); accord, Super Prods. Corp. v. D P Way Corp., 546 F.2d 748, 753-55 (7th Cir. 1976); Welch v. Grindle, 251 F.2d 671, 678 (9th Cir. 1957).
. In Bartholomew, we were clear, moreover, that the status of the counterclaim as compulsory or permissive does not affect jurisdiction. As long as the court has an independent basis of jurisdiction, i. e., as long as jurisdiction over the counterclaim is not ancillary to jurisdiction over the main claim, the counterclaim remains cognizable despite the dismissal on jurisdictional grounds of plaintiffs action. Accord, Kyle Eng’r. Co. v. Kleppe, 600 F.2d 226, 232 (9th Cir. 1979); Duncan v. First Nat’l Bank, 597 F.2d 51, 55 (5th Cir. 1979); Ferguson v. Eakle, 492 F.2d 26, 28 n.6 (3d Cir. 1974); Rare Earth, Inc. v. Hoorelbeke, 401 F.Supp. 26, 34-35 (S.D.N.Y.1975).
. The first United States patent statute, adopted in 1790, see Act of Apr. 10, 1790, ch. 7, § 1, 1 Stat. 109, provided that a patent should issue only if the invention was “sufficiently useful and important.” The Patent Act of 1793, see Act of Feb. 21, 1793, ch. XI, § 1, 1 Stat. 318, authored by Thomas Jefferson, modified the “useful and important” requirement by eliminating both the reference to importance and the modifier “sufficiently.” From 1793 until 1952, the operative statutory criteria were novelty and utility. See Kitch, Graham v. John Deere Co.: New Standards for Patents, 1966 Sup.Ct.Rev. 293, 303 & n.40.
. Section 101, 35 U.S.C. § 101, provides: Whoever invests or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.
Section 102, 35 U.S.C. § 102, provides:
A person shall be entitled to a patent unless—
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs; (1), (2) and (4) of section 371(c) of this title before the invention thereof by the applicant for patent, or
(f) he did not himself invent the subject sought to be patented, or
(g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
. Although Congress revised or modified the patent statute some 50 times between 1793 and 1950, see Graham v. John Deere Co., 383 U.S. 1, 10, 86 S.Ct. 684, 690, 15 L.Ed.2d 545 (1966), it did not codify the Hotchkiss requirement during this period. See, e. g., Act of July 8, 1870, c. 230, 16 Stat. 198.
. Walker summarized the “negative rules” in an early edition of his treatise. See Walker, Patents 26-36 (2d ed. 1889). His summary of the rule applicable to combination patents forbade combining “old devices into a new article without producing any new mode of operation.”
. Hicks v. Kelsey, 85 U.S. (18 Wall.) 670, 673, 21 L.Ed. 852 (1874); see Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 548-49, 20 L.Ed. 33 (1871) (combination must produce “new and useful result”); Pickering v. McCullough, 104 U.S. 310, 318, 26 L.Ed. 749 (1881) (elements in a combination must be “joint tenants in common”); Lincoln Eng’r. Co. v. Stewart-Warner Corp., 303 U.S. 545, 549, 58 S.Ct. 662, 664, 82 L.Ed. 1008 (1938) (combination not patentable if the elements “produce no new or different function or operation than that theretofore performed or produced by them”).
. The Supreme Court, in Graham v. John Deere Co., 383 U.S. 1, 15 & n.7, 86 S.Ct. 684, 692, & n.7, 15 L.Ed.2d 545 (1966), acknowledged that Congress, in enacting § 103, was motivated in part by a desire to overrule the controversial “flash of creative genius” test which the Court had espoused in Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 91, 62 S.Ct. 37, 40, 86 L.Ed. 58 (1941) — a “negative rule” which some lower courts had interpreted as mandating investigation of the inventor’s state of mind. More generally, it seems clear that Congress wished to unify and simplify the multifarious standards that had developed concerning “invention”:
Section 103 states this requirement in the title. It refers to the difference between the subject matter sought to be patented and the prior art, meaning what was known before as described in section 102. If this difference is such that the subject matter as a whole would have been obvious at the time a person skilled in the art, then the subject matter cannot be patented.
That provision paraphrases language which has often been used in decisions of the courts, and the section is added to the statute for uniformity and definiteness. This section should have a stabilizing effect and minimize great departures which have appeared in some cases.
S.Rep.No.1979, 82d Cong., 2d Sess. 6 (1952); H.R.Rep.No.1923, 82d Cong., 2d Sess. 7 (1952), U.S.Code Cong. & Admin.News 1952, p. 2394.
. Republic Indus. Inc. v. Schlage Lock Co., 592 F.2d 963, 968 (7th Cir. 1979).
. See note 10 supra.
. John Deere Co. v. Graham, 333 F.2d 529, 534 (8th Cir. 1964).
. Jeoffroy Mfg. v. Graham, 219 F.2d 511, 519 (5th Cir. 1955).
. Republic Indus. Inc. v. Schlage Lock Co., 433 F.Supp. 666, 669-70 (S.D.Ill.977), aff'd, 592 F.2d 963 (7th Cir. 1979). Other courts have similarly interpreted Black Rock as leaving the Graham test unaltered. See, e. g., Republic Industries, Inc. v. Schlage Lock Co., 592 F.2d 963, 968-69 (7th Cir. 1979); In re Fielder, 471 F.2d 640, 645 (C.C.P.A.1973); Reeves Instrument Corp. v. Beckman Instruments, Inc., 444 F.2d 263, 271 (9th Cir. 1971).
. The subject matter of the patent in Sakraida was a device to remove animal waste from dairy bams. It combined a graded floor, flush troughs, and storage tanks, exploiting gravity to effect an abrupt release of water that would cleanse the bam floor.
. Decisions from this Court similarly fail to decree a synergism requirement. Most recently, in Sims v. Mack Truck Corp., 608 F.2d 87, 93 (3d Cir. 1979), we explicitly declined to rule on whether synergism is a requirement for a combination patent. Seven years earlier, in Hadco Prods., Inc. v. Walter Kidde & Co., 462 F.2d 1265, 1269-70 (3d Cir. 1972), the Court, citing A&P and Black Rock, suggested in dicta that a combination of known elements should display a synergistic result. Hadco Products, however, involved the validity of a design patent, and we overturned the district court’s ruling in favor of the holder on the ground that the court had substituted “subjective visual impressions” for the test of “obviousness to the worker of ordinary skill in the art.” The decision did not rest on a finding concerning synergism, and does not purport to adumbrate the legal standards applicable to combination patents.
. See Plastic Container Corp. v. Continental Plastics, 607 F.2d 885, 904-05 (10th Cir. 1979); Champion Spark Plug Co. v. Gyromat Corp., 603 F.2d 361, 372 (2d Cir. 1979); Republic Indus. Inc. v. Schlage Lock Co., 592 F.2d 963, 967-72 (7th Cir. 1979); Nickola v. Peterson, 580 F.2d 898, 912 n.22 (6th Cir. 1978). See also Crossan, Patent Law: Synergism Rejected, 56 Chi.-Kent L.Rev. 339, 348 (1980) (commending the Seventh Circuit’s abandonment of synergism requirement in Schlage Lock). Some federal courts of appeal, notably the Fifth Circuit, understand Sakraida and Black Rock to require evidence of synergism. See Whitley v. Road Corp., 624 F.2d 698, 699-700 (5th Cir. 1980); John Zink Co. v. National Airoil Burner Co., 613 F.2d 547, 551 (5th Cir. 1980), while others, including the Third Circuit, have heretofore left the issue open. See Smith v. ACME General Corp., 614 F.2d 1086, 1095 (6th Cir. 1980) (recognizing that synergism test suffers from “definitional deficiencies” and “theoretical flaws,” but regarding synergism as a “symbolic reminder of what constitutes nonobviousness when a combination patent is at issue”); Palmer v. Orthokinetics, Inc., 611 F.2d 316, 324 n.17 (9th Cir. 1980) (acknowledging Schlage Lock as “well-reasoned” but declining to reject synergism); Sims v. Mack Truck Corp., 608 F.2d 87, 93 (3d Cir. 1979) (“we need not rule on the question whether a finding of synergism is a precondition to validity in all [combination patent] cases”).
. See S.Rep.No.1979, supra note 10; H.R.Rep. No. 1923, supra note 10.
. Compare Reinke Mfg. Co. v. Sidney Mfg. Corp., 594 F.2d 644, 648 (8th Cir. 1979) (synergism depends on “whether the effect is a new effect”) with Brennan v. Mr. Hanger, Inc., 479 F.Supp. 1215, 1225 (S.D.N.Y.1979) (“a highly desirable new result not theretofore obvious”), and with Burland v. Trippe Mfg. Co., 543 F.2d 588, 592 (7th Cir. 1976) (at least one element must, perform a different function or operation
. Accord, Nickola v. Peterson, 580 F.2d 898, 912 n.22 (6th Cir. 1978) (“Because virtually every invention is an assembly of old elements,” especially stringent standards cannot apply to combination patents “without risk of destroying the patent system”); Reeves Instrument Corp. v. Beckman Instruments, Inc., 444 F.2d 263, 270 n.4 (9th Cir. 1971).
. See Nickola v. Peterson, 580 F.2d 898, 912 n.22 (6th Cir. 1978) (“Unable to create from nothing, man must use old elements, which must perform their normal individual functions.”). Assuming that an imaginative inventor might occasionally find a new function for an old component, this discovery might bear on the obviousness or non-obviousness of the combination. We suggest merely that such developments should not be a prerequisite to patentability.
. Republic Indus., Inc. v. Schlage Lock Co., 592 F.2d 963, 970 (7th Cir. 1979).
. A&P Tea Co. v. Supermarket Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950).
. See, e. g. Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976); Republic Indus., Inc. v. Schlage Lock Co., 592 F.2d 963 (7th Cir. 1979). We have observed in the past that the question of patent validity, including a determination of the obviousness of the subject matter of the patent, is a question of law freely reviewable by the appellate court, but that the “clearly erroneous” standard governs the district court’s resolution of the factual issues relevant to a Section 103 determination. See Systematic Tool & Machine Co. v. Walter Kidde & Co., 555 F.2d 342, 348 (3d Cir. 1977); Minnesota Mining & Mfg. Co. v. Berwick Indus., Inc., 532 F.2d 330, 332 (3d Cir. 1976); Hadco Prods. Inc. v. Walter Kidde & Co., 462 F.2d 1265, 1268 (3d Cir.), cert. denied, 409 U.S. 1023, 93 S.Ct. 464, 34 L.Ed.2d 315 (1972).
. Section 104 provides:
In proceedings in the Patent Office and in the courts, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country, except as provided in sections 119 and 365 of this title. Where an invention was made by a person, civil or military, while domiciled in the United States and serving in a foreign country in connection with operations by or on behalf of the United States, he shall be entitled to the same rights of priority with respect to such invention as if the same had been made in the United States.
. Apparently, no other federal court of appeals has considered whether Section 119 incorporates the Section 112 enablement standard. We note, however, that the Court of Customs and Patent Appeals has not deviated from its holding in Kawai. See, e, g., Tabuchi v. Nubel, 559 F.2d 1183, 1184-89 (C.C.P.A.1977); In re Wertheim, 541 F.2d 257, 261 (C.C.P.A.1976).
. Before the district court and again on appeal, Molins relied principally on the testimony of inventor Tokuno, that a manufacturer would have to install some type of electrical circuitry. The district court properly regarded this testimony as having little relevance to the question of enablement. Read in context, Tokuno’s remarks express no opinion on the dispositive question whether the Japanese disclosure was adequate to enable one with the requisite skill in the art to make and use the patented apparatus. Tokuno’s testimony does not even suggest that a manufacturer would find the specifications deficient — and a manufacturer need not possess the sophisticated knowledge of one skilled in the art, as that term has been defined for purposes of this case.
. The Court of Customs and Patent Appeals has held that the description of the invention requirement is separate and distinct from the enablement requirement, although both derive from the same sentence in Section 112. See In re Barker, 559 F.2d 588, 591 (C.C.P.A.1977), (“A specification may contain a disclosure that is sufficient to enable one skilled in the art to make and use the invention and yet fail to comply with the description of the invention requirement.”), cert. denied, 434 U.S. 1064, 98 S.Ct. 1238, 55 L.Ed.2d 764 (1978); accord, In re Armbruster, 512 F.2d 676, 677 (C.C.P.A.1975).
. 2 D. Chisum, Patents § 7.04, at 7-51 (1981).
. Id. § 8.03[2], at 8-20.
. See, e. g., In re Borkowski, 422 F.2d 904, 909 (C.C.P.A.1970).
. Norton Co. v. Bendix Corp., 449 F.2d 553, 555 (2d Cir. 1971); see Eli Lilly & Co. v. Premo Pharmaceutical Labs., 630 F.2d 120, 132 (3d Cir. 1980).
. See Frank W. Egan & Co. v. Modern Plastic Mach. Corp., 387 F.2d 319, 320 (3d Cir.).
. File-wrapper estoppel precludes a patent owner from broadening the interpretation of a claim to include subject matter surrendered during the course of application proceedings with the Patent Office. See generally D. Chi-sum, supra note 30, § 18.05. Molins argues that Rengo had amended its claim in a way that excluded the Molins apparatus, and that Rengo was therefore estopped from alleging infringement. On the record before us, we cannot say that the district court was clearly in error in finding that Rengo had not in its amendment disclaimed a two-flow-path machine such as the Molins device.
Concurrence Opinion
concurring.
I concur with the disposition of this case by the majority opinion, although I should have been willing to affirm simpliciter and approve the District Court’s determination on the crucial issue of validity vel non of the patent, as well as with respect to the incidental issues of jurisdiction, entitlement to the date of foreign filing, adequacy of description and claim, and file-wrapper estoppel.
I believe that the District Court in substance did determine the issue of validity in accordance with the criteria of Graham v. John Deere, 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545 (1966), and that its references to synergism were merely a rhetorical recital of “synergistic aphorisms,” a ceremonial genuflection in recognition and reflection of the existence of language in opinions of this Court and the Supreme Court where the verbiage of synergism is used.
Moreover, I should have been content to continue the present ambiguous stance with respect to synergism described in note 17 of the majority opinion, rather than to stand up and be counted in the current synergism controversy.
Perhaps the word synergism should be discarded (except for its original meaning with respect to the interaction of chemicals or drugs, and for its use as a fashionable fad in television commercials, and for its theological and scriptural overtones).
As pointed out in John Deere itself, Congress may not “enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. Moreover, Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available. Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must ‘promote the Progress of . . . useful Arts.’ This is the standard expressed in the Constitution and it may not be ignored.” 383 U.S. at 6, 86 S.Ct. at 688.
Similarly, this Court has said: “Thus, the courts, in determining obviousness in a combination patent, must undertake the tripartite Graham inquiry without losing sight of the necessity to determine whether the device performs its function in an innovative fashion.” 608 F.2d at 91.
It must never be forgotten that the power given to Congress by Art. I, sec. 8, cl. 8 of the Constitution is “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” [Italics supplied] The primary policy of the patent laws is to promote invention for the benefit of the public. The private gain enjoyed by the patentee is secondary; the “exclusive Right” conferred by the patent monopoly is merely the means of accomplishing the intended result of advancing the growth of science by adding to the sum of human
To emphasize the importance of these constitutional aspects of our patent system, whether or not they are clothed in “the rhetoric of synergism,” it seemed proper to dwell upon them specifically in this concurring opinion when joining in the judgment of the Court.
. Sakraida v. Ag Pro, Inc., 425 U.S. 273, 281-83, 96 S.Ct. 1532, 1537-58, 47 L.Ed.2d 784 (1976); Anderson’s-Black Rock v. Pavement Salvage Co., 396 U.S. 57, 60-62, 90 S.Ct. 305, 307-308, 24 L.Ed.2d 258 (1969); Hadco Products Inc. v. Walter Kidde & Co., 462 F.2d 1265, 1269-70 (C.A. 3, 1972); Sims v. Mack Truck Corp., 608 F.2d 87, 89-93 (C.A. 3, 1979).
. The conflicting authorities are listed in note 18 of the majority opinion. See also Kathleen Marie Fenton, “Combination Patents and Synergism,” 37 Washington & Lee L.Rev. 1206 (1980).
. See Romans 8:28.
