Robert Sarkisian v. Winn-Proof Corp., William A. Werner, and Wer-Nel Enterprises, Inc., Defendants

stand, sign other dimensions of the such as CANBY, and Circuit Before ALARCON base, length weight the and of the the *, Judges Judge. District and HOFFMAN sign gravi- location of the stand’s center of ty, weight and the and of the dimensions ALARCON, Judge: Circuit conditions, display ordinary board. Under Appellants Corporation, Winn-Proof Wil- springs sufficiently rigid to hold the Werner, Enterprises, and Wer-Nel Inc. liam display upright position. board in an The appeal judgment from a of the district such, however, springs’ resilience is finding claims 3-5 of United States required springs force to uncoil the and 3,646,696 ’696 Letters Patents No. display deflect the board attached to them [“the infringed. Appellee valid and Robert topple is less than the force ent”] result, cross-appeals sign from the court’s sign Sarkisian entire stand over. As a winds, finding tip high Letter Pat- will judgment United States stand over al- 3,662,482 patent”] though springs will ent No. ’482 invalid bend and the dis- [“the patenting. play opera- for double For the reasons stat- board deflect. Because of the below, judgment springs of validi- tion of the to the ed we affirm relation other stand, finding ty infringement sign and but reverse the dimensions of the the base of patenting. sign extremely lightweight stand can be as to double decreasing sign without stand’s stabili- invention involved in this case is a ty-1 portable sign commonly stand of the sort early at sites and In Werner found roadside construction defendant devel- stations, gasoline display gasoline oped spring sign used to mounted stand shown warning figure Appendix. mes- prices sign and other roadside 3 of Werner’s sign sages. Despite sign the fact that the stand stand and the three different stands it, (See light portable, virtually Appendix, Figs. and with a which succeeded is base, 4-6) weightless sign operating principles stand can with- utilized the same stand, up per sign though they to 80 miles stand wind conditions Sarkisian’s dif- “walking” tipping appearance. without over. fered from hour sign designed While Werner’s stands were among unique It is the interaction boards, them, large display to hold he sold sign elements of the stand which enable it part, display for the most without boards. lightness the features combine brought against appel- Sarkisian this suit stability. lightweight base of the lants, claiming that their distribution of up stand is made members or tubular infringed patent. Werner device his legs, arranged parallel in either a relation- arrangement. ship pyramid-like Appellants challenge or in a court’s district (See Appendix, Figs. display findings ’696 valid and * Hoffman, base; Db The Honorable Walter E. United frame structure to the bottom of the Judge length States District for the Eastern District of is V2 of the base. Virginia, sitting by designation. long sign gravity So as the stand’s center of is located somewhere within the base structure according 1. The formula to which the sign, will of the the left side of the formula patent, operates, stand set forth the ’482 zero, satisfied, equal will and the formula Wf(Dg-Db)±Wb weight Db Wf is the where: regardless lightweight of how the base of the including spring frame structure of the structure; sign stand is. Dg weight Wb is the of the base: gravity center of the distance from the infringed.

that it was We will discuss each THE DISTRICT COURT’S ANALYSIS of these contentions in turn. OF OBVIOUSNESS LAW

APPLICABLE 35 U.S.C. 103 establishes that § cannot issue if the invention would have appellants In order for to demon person been obvious to a ordinary skill in uphold strate the trial court erred in the relevant art at the time the invention ing validity patent, of the Sarkisian was made.3 Graham v. John Beere patent’s must statutory overcome the Supreme 3-part Court laid down a fac- presumption validity by clear and con analysis tual to be followed the federal vincing Speed evidence. Shore courts in their determination of the obvi- Denda, ousness of an invention under 103: Here, presumption has been further scope Under content strengthened appeal, on since the trial court determined; art are to be differ- independent made an examination of the ences prior between the art and the pertinent prior making art in its determina ascertained; claims at issue are to be validity.2 findings tion Those factual ordinary the level of pertinent skill in the upheld appeal must be on they unless Against art resolved. background, this clearly Products, erroneous. Saf-Gard Inc. the obviousness or non-obviousness of the Parts, Inc., 1266, v. Service 532 F.2d 1272 subject matter is determined. (9th Cir. 17, 383 at U.S. 86 at 693. S.Ct. Appellants acknowledge that the obvious- VALIDITY THE OF ’696 PATENT ness or non-obviousness of an invention un- appellants claim that Sarkisian’s in- 103, der though ultimately § a question of patentable vention was not under 35 U.S.C. law, cannot be determined without strict 103 because it light § was “obvious” in adherence to those inquiries; factual more- prior art, pertinent is, that it did not over, both the cases of this circuit4 and “synergistic” view, result. In our subsequent cases Supreme Court5 the district correctly court found that Sark- have necessity reaffirmed the of strict ad- Moreover, isian’s device was not obvious. herence to these three inquiries factual below, as we discuss in detail to extent determining the obviousness of an inven- “synergism” that differs from the standard tion. The findings factual by made of obviousness set forth in 103 and inter- pursuant district court Graham, like oth- preted Co., in Graham v. John Beere 383 er findings, factual upheld must be by the. 1, 684, 86 (1966), U.S. S.Ct. 15 L.Ed.2d 545 appellate court unless are clearly erro- we expressly disapprove appropri- it as an Products, neous. Saf-Gard Inc. v. Service ate patentability. standard of Parts, Inc., 532 F.2d at 1272. appellant 2. The fact that pertains. cited 13 Patentability additional matter shall not be references before the district court negatived by does not manner which the inven- destroy presumption since, as the court tion was made. correctly found, below the additional references 35 U.S.C. pertinent previously were either less than the cited art or were cumulative to that art. See g., Polymer Corp., 617, 4. E. Houston v. 637 F.2d Products, Parts, Inc., Saf-Gard Inc. v. Service (9th 1980); 618-19 Cir. Palmer v. Orthokinet- 1266, (9th Cir.), denied, 532 F.2d 1271 cert. ics, Inc., (9th 1980); (1976). U.S. 97 S.Ct. 50 L.Ed.2d 179 Products, Parts, Saf-Gard Inc. v. Service provides part: 3. Section 103 in relevant patent may A not be obtained if ... See, g., Pro, Inc., Ag e. Sakraida v. 425 U.S. subject differences sought between matter 273, 279-80, 1532, 1536, 96 S.Ct. 47 L.Ed.2d patented prior to be and the art are (1976); Rock, Anderson’s-Black Inc. v. Sal- subject such that matter as a whole vage 57, 61-62, Pavement 396 U.S. would have been obvious at the time the 305, 308, S.Ct. 24 L.Ed.2d 258 person having invention was made to a ordi- nary subject skill in the art to which said argue that the district clear whether the appellants say court meant to clearly erroneous prior court made a number of patents art did not contain utiliz- resolving the factual is- findings factual ing principle of downward deflection or disagree. We sues mandated Graham. utilizing that devices principle were simply not manufactured makers of dis- appellants first take issue with 1. The play signs. portions of the record cited court’s assessment of the state the district by the court in support statement, of its “prior art” at the time Sarkisian however, indicate that the latter meaning applied patent. According the ’696 was intended. The truth of the appellants, the court erroneous- latter district claim, as ly prior court, the relevant art was noted the district found that permanently generally certainly supported directed at mounted by the record. For ex- signs, ignoring the fact that several of the ample, Reams, president Bernard pertinent prior patents most art related to largest company manufacturing metal ad- clear, sign unanchored stands. It is how- vertising signs, testified that he had never ever, that the court considered the fact that spring seen a sign mounted stand before prior patents art included unanchored sign appearance.9 stand made its stands; indeed, sign the four most relevant Appellants argue also that the court patents art identified the court committed reversible failing error sign were for unanchored stands.6 The specific findings make on the differences specifically noted that a number of between the art and the Sarkisian prior patents describe stands with a patent. Specific findings, factual base, while the pedestal-type, specifi- unanchored and preferable practice, required are not cally where patents outlined the features of other the opinion, court’s entire sign viewed in the which described unanchored stands.7 Thus, record, context of shows “permanently court’s reference to the dis signs” decidedly mounted was not a refer- trict court in fact inquiries made the man ence “permanently sign by anchored Orthokinetics, dated Graham. Palmer v. Appellant’s stands.” contention is there- As fore without merit. below, outlined we find that the district court appropriate made the inquiries in appellants 2. The argue also reaching its conclusion that the invention finding court erred in concept was not obvious. by resistance to wind “downward deflection display sign of the by area of the coil First, the prior court noted that art was springs” previously was not a method used generally directed at either permanently by display signs. Appel- manufacturers of stands, sign anchored sign or at stands lants erroneously contend that the court weighted whose base was essential for sta- acknowledge failed many prior art contrast, bility. By as the district court patents which principle. utilize this noted, sign Sarkisian’s has a lightweight

The court’s statement on the matter8 base and genuinely readily and portable. ambiguous: somewhat it is completely The district court further noted that patents (U.S.Pat. concept 6. The four were by Webb No. .. “. of resistance to wind 626,256), Thompson (U.S.Pat. 1,541,200), No. downward deflection of the display area us- (U.S.Pat. 1,750,118), Mueller ing springs No. and Hood coil was not a method that had (U.S.Pat. 2,165,704). No. previously by been used manufacturers display signs.” pedestal-type 7. Devices with unanchored bases by noted the district court include the Hood erroneously 9. Even had the court held that the patent patents (U.S.Pat. and the two Watts principle by springs of downward deflection 1,267,021 1,487,635). Nos. Other unan- art, prior was not found in the the court’s sign clearly by chored stands considered finding amply supported of non-obviousness Webb, Mueller, (U.S. Bigelow district court are record, other evidence on the as .we discuss 1,856,349) Thompson. Pat. No. Any findings below. error in the court’s here is therefore harmless. 8. The district court stated: view, prior prob- however, taken art to the suits.” In our approach Sarkisian’s sign stability completely was differ- lem of patent upheld must be under the standard approach ent from the utilized Sarkisian. obviousness, patentabili- and therefore of patent The device described Webb’s used ty, for combination devices articulated in heavy, rocking a base. The device describ- Supreme both the relevant Court decisions patent ed in Mueller’s used a counter- and in the decisions of this circuit. weight, by Bige- as did device described Hood, signs, such as low. Other Synergism and §103 weighing pounds. base on order of contrast, By unique design and interac- The Patent Act of 1952 established that sign; parts tion of described an new, invention must be shown to be opinion, in its enabled Sarki- useful, and non-obvious in order to be sian’s stand to remain stable under requirement entable. The of non-obvious- conditions, high regardless pon- wind ness, with principally which we are con- base, lightness derousness or of its cerned, is set out § counterweight. without use of a 103, however, Section did not immediate- district court’s discussion of differences ly bring about the uniformity in the law of between the relevant art and the patentability which its drafters had intend- complies fully thus Sarkisian ed; the circuit split courts remained over requirements of Graham. precisely what required.10 Finally, SYNERGISM Supreme Court offered con- Finally, appellants argue that Sarki trolling interpretation requirements sian’s should be invalidated because 103 in Graham v. John Deere Co. it is for a “combination” invention which Recognizing that the 1952 Amendments to produce “synergistic” did not effect. Ac the Patent Act were bring intended to uni- cording appellants, any combination de formity and definiteness to the determina- is, any composed vice—that of ele patentability, tion of the Graham case laid already ments found in the relevant three-part down the analysis factual cited “synergistic” art —must effect in earlier to be followed in the determination patentable order to rise to the level of in of non-obviousness under § “synergistic” vention. This effect is de approach by outlined Graham to the ways by in a appellants: scribed number of analysis of non-obviousness was reaffirmed described, example, it is produc for as the by Rock, the Court in Anderson’s-Black Inc. greater tion of “an effect than the sum Co., Salvage 57, v. Pavement 396 90 U.S. together”, the several effects taken as the 305, 24 (1969). S.Ct. L.Ed.2d 258 In Black production of “unusual surprising” re Rock, the Court invalidated a combination sults, performance and as the of a new an asphalt-laying for device for fail function the elements in the combina ure to meet the standard of non-obviousness According appellants, tion. 103, set forth in concluding produce invention com “synergis failed to this question bination in “reasonably tic” result was because each element in his in obvi “perform[ed] ordinary ous to one of vention the same skill in the functions as relevant performed were combination”, invalidating outside the art.” In patent, the Court and alternatively, because invention did admonished that “strict observance” of the - produce surprising “unusual and re- requirements set forth in the Graham case Compare, Manufacturing denied, Caldwell v. Kirk (2nd Cir.), 911, cert. F.2d 530 350 U.S. Co., denied, (8th Cir.), 193, cert. (1955); 269 F.2d 506 361 Brown v. 76 S.Ct. 100 L.Ed. 799 Brock, 915, 260, (1959), 723, U.S. (4th 1957). 80 S.Ct. 4 L.Ed.2d 185 See 240 F.2d 728 Cir. Burgess Co., generally Kayton, Wasserman v. & Blacher 217 F.2d Nonobviousness of the Novel 402, Locks, Invention, (1st 1954), Kwikset 103, 404 Inc. v. Cir. 35 U.S.C. Nonobvious Hillgren, denied, (9th Cir.), cert. 210 F.2d 483 Patentability ness —The Ultimate Condition of 989, 852, (1954), (1980). 347 U.S. 74 S.Ct. 98 L.Ed. 1123 2:101 Lyon Co., Optical v. Bausch & Lomb 224

677 273, 1532, necessary question were to resolve the 96 S.Ct. 47 (1976). L.Ed.2d 784 62, Sakraida, obviousness. Id. at 90 S.Ct. at 308. See pursued Court the three- Corp. Instrument v. Beckman In- Reeves part inquiry mandated Graham in con- struments, Inc., 263, (9th 444 F.2d Cir. cluding that the combination question 1971). only The Court’s reference to the would have been obvious person to a skilled “synergism” principle of was a statement in the relevant only art. The reference may that “a combination of elements result synergism made to in the case was in re- greater in an effect than the sum of the sponse to the lower court’s conclusion that separately. several effects taken No such “synergism” was present in the device un- synergistic argued result is here.” This consideration; der nowhere in Sakraida hardly syn- statement a reaffirmation of suggest does 'court synergism that ergism necessary patenta- as a condition of required for patentability. bility; it is at best either a comment on the Despite holding of the Graham case fact that combination devices sometimes subsequent and its reaffirmation in Black produced results which could not be Sakraida, Rock and the question of the components separately, taken or on proper standard patentability for combi- the fact that combination devices occasion- nation inventions remains a source of con- ally- produce effects which seem greater stant and considerable confusion in the fed- than the separate- sum of the effects taken eral courts. Our circuit has not been com- Rich, ly. Laying the Ghost of the “In- pletely immune problem; from this the de- Requirement, vention” in Nonobviousness— cisions in this circuit present seems to The Ultimate Condition of Patentability variegated always and not a consistent 1:501, Republic Industries v. tern of rules.11 Schlage (7th Lock 592 F.2d 970-71 1979). put Cir. Neither of these is forward admittedly It is difficult to reconcile opinion requirement as a for the completely all of the prior cases in our patentability of combination devices. circuit which have addressed principles again of Graham were ad- the standard of patentability for combina Pro, Ag hered to in Sakraida v. patents.12 believe, tion however, U.S. We cases, example, suggest “syn- (see, parts, g., Eastham, 11. Some e. Astro Music Inc. v. ergism” stringent patentability is a more (9th test of 1977)); 564 F.2d Cir. or that the than usual obviousness test §of 103. See perform old elements must also an additional Hayes Products, NDM or different function in combination than (9th suggest Other cases performed out of it. Tveter v. AB Turn-O-Mat- surprising the “unusual and results" for- ic, 835; Tappan Co., 633 F.2d at see Norris v. only mula is utilized to assist determining whether a combination important emphasize It is that the alterna- non-obvious, replace inquiries but does not expressions requirements tive for the mandated Graham. M-C Industries v. Pre- patentability expressed of combination devices Dynamics Corp., (9th cision 634 F.2d 1211 Cir. Tveter, Astro, Music, in cases such as 1980). Norris, wholly analysis consistent with our Similarly, emphasize some of our decisions discuss, supra, here. As we the alternative inquir- that the case set Graham out the crucial require- formulations of the nonobviousness determining ies to be made in obviousness. may ment of 103 articulated in these cases be See, g., Polymer Corp., e. Houston v. 637 F.2d analytically determining useful in 617, (9th 1980); 619 Cir. Photo Electronics particular Moreover, of obviousness in a case. Corp. England, 772, (9th v. 581 F.2d 774-77 Cir. these formulations serve as useful reminders 1978); Products, Parts, Saf-Gard Inc. v. Service that a combination of old elements must be 1266, 1270, (9th 1976). 532 F.2d 1272 Cir. great monopoly examined with care lest a be Denda, Speed 469, Corp. See Shore v. 605 F.2d granted for advances that are no more than (9th 1979). sug- 471 Cir. Other cases seem to reasonably anticipated improvements over the gest that a combination invention must also prior art. principle utilize a new or achieve a new result patentable in order to rise to the level of inven- 12. Some of the first cases in this circuit after tion, Turn-O-Matic, (see, g., adopt “syn- e. Tveter v. AB 633 Graham seemed to some version of 831, (9th 1980)); ergism” appropriate F.2d 834 Cir. that a combina- pat- as an standard for the entability tion invention must also “exceed the sum of its of combination inventions and corre- 678 course, may It argued, among our cases are

the differences more view, In our the cen- various apparent than real. formulations standard of relatively cases remains entability tral theme of the cases are more found in our than combination invention is constant: Where a style, mere but rather differences of reflect involved, searching thorough inquiry disagreement a fundamental about may indeed be called into its obviousness proper patentability standard of for combi- for, reflecting the fact that appropriately Synergism, typ- nation devices. most patentable likely is less to be invention formulation, requires ical that an invention of known elements. found a combination produce surpris- in some sense “unusual and Corp. England, v. 581 Photo Electronics ing patentable. to be results” in order See 772, 1978); (9th Cir. see Great F.2d 775 Penn Penning- International Industries v. Supermarket Atlantic Tea Co. v. & Pacific 1078, Corp., (9th ton 583 F.2d 1081 Cir. 147, 152, Equipment Corp., U.S. 71 340 S.Ct. 1978). Those who contend that a combina- 127, 130, cases, (1950). The 95 L.Ed. 162 tion produce synergistic device must ef- ways, consistently stress this funda- various might argue fect our cases’ continual concerning the precept mental more intense produce insistence that devices combination degree to which scrutiny combination surprising “unusual or results” demon- See, subjected. g., inventions must be e. “synergism” require- strates that remains a Denda, 469, Speed Corp. v. 605 F.2d Shore ment patentability this circuit. (9th 1979); 471 International In- Cir. Penn This “synergism” represents view that an Corp., 1078, Pennington dustries v. 583 F.2d accepted patentability standard of in this 1978); (9th 1081 Cir. Photo Electronics circuit is upon based fundamental misun- 772, Corp. England, (9th v. F.2d 581 775 Cir. derstanding of the sense which a combi- Dy- Industries v. Precision M-C produce nation invention must “unusual or 1211, (9th Corp., namics 634 F.2d Cir. surprising patenta- results” in order to be 1980); Orthokinetics, Inc., Palmer v. produce may ble. A device “unusual and 316, 1980) (9th [describing 323 n.15 Cir. without, surprising strictly speak- results” degree scrutiny this more intense as a ing, producing “synergistic” Nevertheless, results.13 “more severe test”]. emphasize Statements in 103, our cases interpreted standard set out in need for or surprising “unusual Graham v. John Deere and reaffirmed results” cannot, Sakraida, therefore, automatically in Black Rock and remains the be taken as granting determining imprimatur touchstone an to the synergism obviousness requirement. patentability any and hence the inven- “syner- sense tion, gism” including requires combination devices. that a combination invention deemphasize spondingly importance analysis required by under § 103 and the Gra- See, analysis. g., ipso e. Graham Hewlett-Pack ham would facto “unusual and Tel-Design, Inc., 625, Company Reeves, surprising ard v. 460 F.2d results”. 444 F.2d at 273. (9th Regimbal 1972); Scymansky, case, any v. position Cir. production In 333, 1971); (9th 444 F.2d Santa Anita surprising “unusual or results” somehow re- Mfg. Lugash, (9th v. places 3-part analysis required by Graham Cir.), denied, cert. 389 U.S. 88 S.Ct. explicitly rejected by has been this circuit. during period, Even L.Ed.2d 83 this Industries, Dynamics M-C v. Inc. 1211, Precision however, clearly never this circuit embraced Corp., “synergism” suggested the formulation of Regimbal these same term that cases. recognize surpris- We that the “unusual and Scymansky, supra, seemingly relied on this ing occasionally equated results” formulation standard, synergism this circuit decided Reeves “synergism”. cases, in our cases with These Instruments, Corp. v. Instrument Inc., Beckman however, generally utilized the “unusual and (9th Cir.), denied, 444 cert. F.2d 263 404 surprising results” formulation a sense whol- 283, 951, (1971) U.S. 30 92 S.Ct. L.Ed.2d 268 ly consistent with 103 and with the Graham represented which held that the defini Graham analysis. “Synergism”, supra, as we discuss approach tive statement of the to be taken proper not consistent with 103 and is not a question federal courts to the of non-obvious patentability measure of for combination inven- Reeves, sug ness. 444 F.2d at 272. Reeves tions. gested that device which was not a obvious

679 surprising produce produce “unusual or results” is indeed “surprising” results. See way require in which not the our decisions Speed Corp. Denda, 469, Shore v. 605 F.2d surprising an “unusual or result” for (9th 1979); 471 n.2 Products, Cir. Saf-Gard entability, as critical examination of our Inc., Inc. v. Service Parts 532 F.2d at 1272. cases will demonstrate. This misunder- It important to note here that standing may responsible for much of emphasis properly is most on whether the the confusion in this area. particular inventor’s selection of elements There is a in which sense combination produce to the result achieved was obvious surpris- devices must “unusual or prior to the time the invention was made. ing” patentable. results order to be A announced, Once the combination is the re- invention, definition, combination draws may longer sults no seem unusual or sur- exclusively pool from the of elements al- prising to those of ordinary skill in the ready prior available in the relevant art. relevant art. post-hoc perceptions, Such utilization of certain ele- inventor’s however, are not the relevant measuring pool ments within that to achieve a certain stick of invention. Our consistently cases not, however, may represent result an obvi- against warn danger concluding than may ous choice of It elements. be that an invention is “obvious” because opera- its prior away art teaches from the use of principles tive simple seem so result, those elements to achieve that that clear prior simple with the hindsight.16 See, art is and the manner of com- benefit of g., e. bining the Products, elements in the new device is Parts, Saf-Gard Inc. v. Service complex, or that elements in the new Inc., 532 F.2d at 1272. Supreme As the play such different and non-obvious Court noted in the case of United v. States roles in the new device that the choice of Adams, companion case to Graham : those elements to achieve these results begs question It ... merely to state apparent. would not have been In each of magnesium cuprous chloride situations, these principle is the same: were individually battery known compo- the results combining achievable the ele- nents. If novel, such a combination is may ments selected not have been obvious issue is whether bringing together them 14 prior time that the inventor fash- taught by the invention was obvious in very ioned that combination into his or her light art. invention.15 Where the results achievable 39, 50, 708, 713, 15 383 U.S. 86 S.Ct. combining particular L.Ed.2d elements se- Republic 572 lected were not obvious to ordinary those of Industries Inc. v. Co., skill in the Schlage 963, relevant art (7th the time the Lock 592 F.2d 971 Cir. made, invention was 1979). the combination will typically phrase Co., 20, cases (2nd use the “at 1935) Kidde & 79 F.2d 22 Cir. express time the invention was (emphasis added). made” to principle. phrase “prior same We use the Fe-Pomeroy, Z, to” Inc., See Santa Inc. v. P & 569 simply unambiguously to indicate 1084, (9th 1978). F.2d 1097 Cir. proper vantage point from which to view the question of obviousness is the time Pennington immediate- Penn International Industries v. ly completed 1078, before the (9th inventor and revealed 1978); 583 F.2d Cir. Na invention, rather than Sponge after the invention is Corp. tional Cushion Co. v. Rubber Orthokinetics, Inc., Cal., 731, made. See Palmer v. (9th Cir.), denied, 286 F.2d cert. 316, (9th 1979). Cir. 368 U.S. 82 S.Ct. 7 L.Ed.2d 438 (1962); Corp. See Reeves Instrument v. Beck Judge 15. As Learned Hand noted: Instruments, (9th man Thus, up example, any All machines are made of the same ele- the fact that engineering capable analyze operat ments .... But the elements are student could infinity permutations ing principles an an the selection invention is irrelevant group proves produces serviceable to a of whether the device given may require high degree surprising Speed need unusual and results. Shore originality. Denda, Corp. It is that act of selection which is the invention.... B. G. v. Walter determining Thus, combining not whether the ele- where it is obvious to ordinary accomplished skill in the relevant art ments to achieve the result those of ordinary was made prior to the time the invention was “obvious” to those of skill in combining particular, Indeed, skepticism known that certain relevant art. such suggests a certain manner would achieve achieving elements in a certain result result, the combination" is combining particular a certain elements man- produces which are results invention ner so far from done was removed The results are surprising”. “unusual typical practitioner’s perception of the state surprising”, or or “non-obvious” “unusual of his or her art achievement 103, regardless whether the “sur under obvious, only seemed not but highly prising” fades once character of results improbable. “requirement This of skepti- is is all our device revealed. This cases cism”, however, qua is not a sine non for require.17 patentability of combination devices. equally patent- We have held device to be way There a second in which the “un- greeted able where its creation is with im- surprising” requirement usual or results has widespread acceptance mediate and rather however; interpreted, though been similar indeed, skepticism;18 than with widespread above, far to that outlined it is more diffi- acceptance and immediate itself recog- cult a device to achieve. It is this important nized as evidence device second sense which seems accord most was it not obvious at the time was invent- closely requirement “syner- with the ed.19 gism.” interpretation, this Under con- sequences of combining the elements must Moreover, if requirement skepti- surprising” seem “unusual and to those of non-obviousness, cism were a condition of ordinary skill in the art even relevant after constantly repeated the caution in our cases

the elements of the combination and the against measuring the obviousness of an manner their combination known. invention its seeming “obviousness” af- interpretation, an Under this invention is ter the invention is made would be mean- only non-obvious if claims about its success- ingless, always it appro- because would be operation greeted skepticism ful with priate inquire into whether the invention ordinary those skill the relevant Thus, seemed once it obvious was known. arts. the requirement of synergism skepti- or of

The fact that an is met invention cism conflicts with the case established law skepticism may be of assistance to a court our circuit.20 emphasize others, analyzing ques- etc., might give 17. We ure of be utilized to obviousness, inquiry light tion of surrounding focus to the circumstances the ori- gin subject should not directed to whether a sought patented. matter to be surprising “unusual achieves results:” non-obviousness, As indicia of obviousness or cornerstone of the determination of obvious- inquiries may these have relevance.” Graham analysis ness is the outlined Graham 17-18, v. John Deere 383 U.S. at 86 S.Ct. Products, Corp. Hayes Inc., NDM case. See Fe-Pomeroy, at 693-694. Santa Inc. v. P & (9th 1981). Cir. The con- Co., Inc., (9th Z 569 F.2d 1084 Cir. Saf- produces clusion that a device “unusual or sur- Products, Parts, Inc., Gard Inc. v. Service prising analysis results” must itself rest on the Speed Corp. F.2d 1272-73. See Shore v. Den- Graham. See Reeves Instruments da, at 605 F.2d 471. Instruments, Inc., Corp. v. Beckman 444 F.2d at require- 20. There is third sense in which the ment that an invention “unusual or See, Products, g., e. Saf-Gard Inc. v. Service results", surprising requirement or the that Inc., Parts, (9th 1976); 532 F.2d Cir. results of the “could combination not have Corp. Reeves Instruments v. Beckman Instru- predicted might been before hand” be inter- ments, (9th 1971); preted. may produce An invention results Sponge National Cushion v. Rubber Co. which are so novel that could not have Cal., 735-36 predicted been from the laws of nature known made; secondary similarly, 19. “Such at the considerations commer- time the invention was success, needs, long may cial an felt but unsolved fail- invention reveal some hitherto un- moreover, ing the also conflicts with differences between the claimed Synergism, Supreme prior art, re- and with the Court’s invention and the as well as art, adherence to the peated determining prior caution that strict the state both be adhered to. inquiries factual Graham analy- of which are relevant to the Graham analysis required by and the However, Section sis. sameness or difference of Graham, of the focus on obviousness function cannot be a sufficient condition of the time the inven- prior invention to or at either the obviousness or the non-obvious- made; synergism on the was focuses tion devices, ness of combination because the the invention after it has obviousness elements in combination devices almost al- together. Synergism thus turns put been ways perform functions which in some nothing a difference in what is more than sense are the same as and in some sense are or non-obvious- degree of obviousness they played different from the roles in the separate measure of ness into a and distinct prior art. approach is not re- patentability. Such an This seemingly pos- inconsistent result is logic, supported by it stat- quired by nor is any sible because elements in device do ute or decisional law. function; single have they play many “synergism” Other formulations of the different roles at the same time. On the requirement subjected when fare no better general description, most level of for exam- scrutiny. to careful ple, the elements in a combination device requirement that a combination de- play will the “same” role the invention as produce “greater vice must a result which is they play every other mechanical device parts” clearly only than the sum of its they part: of which Judge are a as Learned figure speech: an invention cannot be noted, Hand once “all machines are made greater truly parts than the sum of its up rods, of the pawls, pit- same elements: creating something nothing, without out of mans, journals, toggles, gears, cams nature would violate laws of as like, acting parts all their they always do appearance “syner- we them. The know always Even must.”21 when we nar- gism” simply here is a measure of “our row our focus the specific played by role knowledge properties imperfect question the elements in prior perti- parts,” rather than of the creation of art, nent it is almost inevitable that something nothing. Republic out of scrutiny play elements under will “the Co., Schlage Lock Industries same” role in the new invention as ignorance Our of played prior in the devices of art: defini- properties of elements when in combi- tion the composing elements the new “com- nation is relevant to the already bination” invention are found in combination, obviousness of the as discussed and are taken Finally, from the art. supra; independent it is not an test of it is almost inevitable that the elements of non-obviousness. play invention will “a new and different Lastly, it is sometimes said that the ele- role” in the new they played invention than produce “syner- art, ments of combination because the “function” of gistic” they perform any result if a new or element can reasonably be described question. different function in the device in terms plays of the role that element Again, achieving sameness or difference of function brought new result about may be of assistance to a court in determin- the invention. unsuspected property might known and of the ele- new law of nature be a sufficient condi- however, Clearly, invention, patentable ments used in the invention. tion for it has never been require any patentability, invention “unusual either case law or surprising results” in this sense re- would statute. every quire that invention reveal some hitherto previously unknown law nature or some 21. B. G. v. Walter Kidde & property unknown of the material. While reve- (2nd important property lation of an new or of a obviousness; answering question in the provides an illustra- of

The case before us danger focusing too the narrowly question any of basic remains whether tion of the dif- significant of whether the elements of ference question enough on the in function to scrutiny perform a support the invention under conclusion the the that device in “new function. One of the and different” was not obvious to those of ordi- device is crucial elements in Sarkisian’s its nary skill in the relevant art. tension springs. springs, With all extension In vention Sarkisian’s art, prior

including utilized in the the those ample support There is in the record play in springs extension Sarkisian’s for the district court’s conclusion that Sark remaining tightly the of “same” function isian’s device was not to one obvious separated by an external wound unless ordinary in skill the relevant art. The specifically, the extension force. More reasonably court could conclude that noth springs in device share with Sarkisian’s ing prior suggested in the art that combin many prior the those of art references func- ing pair frame, a springs, of extension a a holding sign stand’s display tion of lightweight base and a sign certain di However, upright position. if board an unanchored, mensions could result in an springs’ function is described terms truly portable, yet sign stable stand. In whole, of their in the device as a function or deed, appellant Werner described his own they play achieving terms of role stand, principles which utilized the same as by novel result obtained Sarkisian’s de- patent, “amazing” Sarkisian’s and as a vice, suddenly on a springs take “new “breakthrough in the sign construction they and different function:” enable the field.” display toppling to deflect without board art, course, Prior did contain the ele- sign Thus, depend- the entire stand over. ments Contrary device. to ing on how one chooses to describe role appellants’ assertion, however, these ele- springs, play of the extension both perform ments did not pri- “the “new functions same function” and a and differ- or art which were similar or even prior analogous ent from art function” those de- played to the functions vices. the elements in example, Sarkisian’s device. “spaced For Any combination invention intro- apart” legs, similar to those described in novelty duces feature some its re- —in patent, Sarkisian’s ’696 are illustrated in sults, operation, in its manner of or in any Thompson. However, base of significant way other utilize elements —will Thompson “spaced the function apart which can performing be described as legs” simply provide was to a secure base “new or different function.” element’s placement sign. of a There is no evi- only “function” need be described in terms dence “spaced that apart” structure of contributing its role in invention’s Thompson base in any had role in the novelty to achieve that At the result. same ability device’s to withstand an impinging time, it always will almost the case indeed, as noted, the district court play these elements role in “same” force — there is evidence Thompson’s no sign they played prior invention as in the art designed proof stand was to be wind at all. they are, definition, from which taken. Similarly, the use of “spring means” both be, therefore, It cannot combination impart flexibility to a sign stand and invention is non-obvious whenever its ele- display return sign position to vertical perform ments a “new and different func- tion”; following deflecting it removal of a nor is true that “sameness” force previous function is itself a shown a substantial definitive indication number of patents. of obviousness. Sameness and difference in some of patents,22 In these simply function are factors to be base considered of the device is permanently either g„ 1,726,- (U.S.Pat. (No. (U.S.Pat. 660595), 1,532,865) E. Franklin Patent No. Beck No. 817), (U.S.Pat. 2,292,785), (No. Birge Henne No. the Danish Patent (U.S.Pat. 2,949,324), Belgian No. Patent prior function is even in the is inserted into a art ground to the affixed cited, prior since all of these patents attached. In art permanently holder that patents perma- to a describe devices which are others, spring means is attached nently anchored. primary heavy, unanchored base.23 stability of these determinant of short, then, while elements of Sarki- base, which is either sign’s is the stands art, appear sian’s device none of ground or is affixed to the permanently suggested art devices had combin- extremely heavy material in rela- made of ing unique elements in the fashion these genu- the rest of the device.24 tion to by done to achieve the results he Sarkisian ex- performed by function the inely novel prior suggested achieved. The art that was an springs in device tension Sarkisian’s signs required heavy per- road either a or supporting fact the district important manently anchored base in order to be sta- finding of non-obviousness. court’s ble, spring played means a relative- ly contributing stability minor role in to the Moreover, prior patents the in none of stands, sign the of unanchored and that springs tension in the must the amount of precise amount of initial tension the ex- the the other features of correlated to springs significant tension was not a factor sign stand to be sign stand in order for the enabling portable sign stands to with- stable, their springs perform the or for impinging tipping stand an force without properly. In in the device Sarki- function over. combination of elements Sarkisian’s contrast, device, the amount of sian’s prior produced found in the art thus a re- sign springs is crucial to the tension in surprising, sult that was unusual and be- stability. stand’s produced readily portable, spring cause it a prior art patents also There are mounted, sign windproof light- stand pairs of non-con- that illustrate the use weight base. springs within the “spaced apart” or eentric The trial court’s conclusion that Sarki- meaning “spaced apart” in Sarkisian’s sian’s invention was not obvious under spring pairs the in all of patent.25 While fully supported by 103 is thus the evi- Sarkisian’s, devices, prevent including these dence of record.26 sign “canting” twisting about the from axis, primary properly function of the The trial also its vertical considered “secondary” springs in so-called indicia of non-obvi- “spaced-apart” Sarkisian’s upholding validity sign in which a ousness Sarki- is to control direction considerations, vehicle, patent. such as is deflected when struck sian’s These stand device, long- No similar success of the away from the line of traffic. commercial patents, testimony g., patent, Dono- established that the term 23. E. Hood the Watts “spaced apart” (U.S.Pat. 2,164,680). inserted in was the claims of van No. patent ’696 order to describe precisely more the structure of Sarkisian’s in- stands, sign permanently 24. In the anchored vention, springs in which the are not located on stability problem, because the is of course not axis, the same vertical and to differentiate it sign tip. In stand cannot the unanchored prior from art devices such as Hood in which springs somewhat stands the do contribute pair springs were located on the same stability, perform but do not the stand’s vertical axis. performed by springs in Sarki- the function sian’s device. Appellants’ suggestion that Sarkisian’s de- merely vice is a combination of two or more of See, g., Belgian patent, e. the Danish prior patents repeti- art is little more than a patent, patent relates to a flexi- Henne’s which argument of its tion Sarkisian’s invention football, the similar Beck ble line marker light Simply was obvious in art. (U.S.Pat. Lippold’s patent patent, No. pointing patents to other which utilize elements 2,030,379) relating signs suspended from a found in Sarkisian’s invention does not consti- horizontal, pole. All of these devices utilize particular tute a demonstration that Sarkisian’s “spaced apart” springs, but involve substantial- patentable. combination of elements was not ly different inventions and are therefore of Denda, (9th Speed Shore v. questionable relevance. 1979). Cir. needs, court held unsolved unsuc differences which exist- felt but sign ulti attempts problem appellant’s to solve the ed between and the cessful Sarki- insignificant, sian were mately the new invention addressed determining equivalents accused devices were the criteria in valid and relevant patent. device claimed We af- ordinary skill the relevant ’696 the level of firm.29 art, determining obviousn and therefore Orthokinetics, Inc., v. Palmer

ess.27 language patent’s aof claims Fe- (9th Cir. Santa F.2d 324-5 provide starting point for determining Z, Co., Pomeroy, Inc., P &v. scope patent’s monopoly, and (9th finding The court’s 1097-98 initially provides against the measure sign has met with substan that Sarkisian’s infringement determined. a combina fully supported tial commercial success patent, infringed only tion if evidence; appellants apparently do the accused device contains all of ele Similarly, this the court’s contest fact. set patent’s ments forth in the claims. Nel sign finding that the Sarkisian solved Batson, son longstanding problem of such stands walking fully tipping in the wind is patent’s The language literal of the supported the evidence. evidence claims, however, is not sole the measure of satisfactory “readily also indicated that no infringement. patent might A be rendered portable” signs road were available before thing” a “hollow and useless scope were its invention; testimony Sarkisian’s indicated confined to the language literal of its existing signs unanchored road had claims, making since the of a minor and weighted to be down to 300 insignificant otherwise variation in the in pounds sandbags of in to order maintain might pirating vention then take device stability. secondary their These considera outside the language claim’s literal the support tions also trial court’s conclu protection patent. hence outside the of the sion that device Sarkisian’s was not obvious. equivalents The doctrine of has evolved in no We find error. response problem. to this Under that doc INFRINGEMENT trine, two devices are considered to be the Infringement A. if they substantially same do the same work appellants’ The district substantially manner, court found that in the same and ac infringement complish device induced of the claims substantially the same results. patent.28 finding of the ’696 Paper Bag While that Union Machine Murphy, Co. v. appellants’ 120, 125, devices did not come within the U.S. 24 L.Ed. 935 language patent’s claims, literal the of of infringement determination is therefore recognized Appellants 27. It has been these that so-called contended that their devices did susceptible directly infringe “subtests” of obviousness are more patent the Sarkisian be- judicial highly devices, generally than treatment are the techni- cause their sold without board, present patent display litigation. cal facts often did not have a frame with a Co., Inc., Fe-Pomeroy, area, relatively large Santa Inc. Z required by v. P & surface secondary patent. F.2d at 1098. These considerations claims of the ’696 The Court found equally moreover, important, are infringement where the accused devices induced patent inquiry “technologically patent involves of Sarkisian’s because were de- prosaic” signed display having arts often relevant to mechanical de- to hold boards a relative- operative principles ly large vices. these cases the surface area. comprehensible of the device more ordinary layperson, and the state of the Appellants manufactured four different fully recognition art more understood. Judicial sign stand; (Ap- models of their the last model importance secondary considera- pendix, Fig. 6) is the least similar to this last may tions these cases serve to check the only, model since our discussion here a fortiori tendency comprehension to translate this into applies appellants’ to the earlier models which conclusion that invention was obvious. bear an even closer resemblance to Sarkisian’s England, Photo Electronics sign stand. According appellants, described. even where elements Sarki- complex inquiry: sign represented the literal stand at a mi- device fall outside sian’s best an accused claims, the court language patent’s highly of a nor advance in a crowded and devel- elements are whether those oped must determine field. While the evidence indicates elements set forth “equivalents” of patents that numerous existed for claims in order to determine patent’s stands, sign both anchored and unanchored occurred. infringement has whether fully supports also the evidence district assumption court’s Sarkisian’s in an accused Whether an element represented significant advance in the element “equivalent” of an device is the unanchored, readily portable, field of wind- may turn on how patent in a described proof sign stands.31 As discussed in Part I lan narrowly the relevant expansively opinion, fully supports of this the record guage is construed. trial court’s factual determination accorded a range equivalents significant step device was a importance large part a function of progress of the relevant art and was question. the invention originality of range equivalents entitled to a therefore equiva purpose of the doctrine Since enough encompass appellants’ broad just the inventor a lents is to secure for device. invention, patents her reward for his or significant important and represent

which fully supports 1. The record the district en technology are advances in the relevant court’s determination that the base struc- simi range equivalents; titled to a broad appellants’ sign ture of the latest stand represent a rather larly, patents equivalent was the model base struc- are enti in a crowded field small advance ture of stand described the ’696 range correspondingly narrow of to a tled by Figure As patent. legs illustrated Batson, equivalents. Nelson v. “generally of accused device are not Gir. parallel” to each other as described in the finding infringe- district court’s of The However, patent. claims of ’696 Sarkisian’s primarily on its factual deter- ment rested testified, appellee’s expert legs in the features of the mination that two essential device and in accused Sarkisian’s device equivalents were the of ele- accused devices function, perform precisely the same which in the claims of the ’696 ments described both the the sign is stabilize base and First, found that patent. the court Moreover, stand as a whole. the record legs constituting the base of design of the supports the conclusion that this function is signs equivalents accused were the of precisely performed the same fashion in “generally parallel” legs described in long both devices. as the is So base of The court patent. the claims of the ’696 length certain and a certain minimum though pair of also found that even weight, precisely correlated with other di- phys- springs in the accused devices were in sign mensions and features of the stand and they were the ical contact with each other springs, long its and so as the stand’s center “spaced apart” springs equivalent of the base, gravity is within of the base will patent.30 in the claims of the ’696 described sign firmly remain stabilize stand and planted extremely high even under wind range appellants The contend of conditions. the accused devices and equivalents patent Both Sarkisian’s principle device utilize this entitled is so narrow that it cannot encom- Sarkisian’s just pass fashioning respective the features of the accused devices the bases of their de- very range equivalents. supra; for discussion of the allowed it a broad of It note meaning “spaced apart” pat- apparent opinion, of in Sarkisian’s from the court’s as well as range equivalents ent. from the of which the court device, re- accorded Sarkisian’s garded that the court explicit finding significant 31. The district court made no Sarkisian’s invention as a range equivalents technology. as to the of to which Sarki- advance in the relevant entitled, although sian’s was the court legs of the the same in precisely The fact that the accused results the same vices. man- parallel device are to each other does ner. finding not The district court’s of equiva- change fact base of supported lence is therefore fully by the principle device embodies the same used in evidence is not clearly erroneous. patent in pre- and functions Sarkisian Contributory Infringement B. cisely way achieving the same same finding result. The district court’s Finally, the record supports the court’s equivalence clearly therefore not errone- that appellants’ sign determination stand ous. infringement induced patent. of the ’696 2. The district court also found that the sign While most of the accused stands were pair springs sign used in accused sold a display without board a “rela- pair equivalent stand was the area,” tively large they surface specifi- are “spaced apart” springs coil described cally designed signs. Appel- hold such patent. pair claims of ’696 lant acknowledged Werner as much in his springs patent Sarkisian served deposition. uphold We the district court’s they canting two functions: minimized or finding infringement. contributory twisting display board around its 271(c).32 U.S.C. § axis, they vertical assured that the DOUBLE PATENTING away stand from would deflected cross-appeals Sarkisian from the line of traffic should the stand be struck judgment district court’s invalidating por a vehicle. The evidence established that tions of claims and of the ’482 on spring’s the crucial determinant of the ef- grounds patenting. of double For the rea purposes fectiveness for these is not the below, sons stated we reverse the district springs, horizontal distance between the but finding court’s of invalidity. springs is whether the are located on the patent application Sarkisian filed the ’482 long same axis. as the springs vertical So 30, 1970, on axes, July while are on different the ’696 ap- located vertical plication still effectively regardless pending.33 will function was of how ’482 “spaced ent apart” they close how issued some two after on the months the ’696 patent, springs accompanied plane. pair horizontal on the a “terminal dis- device, accused located claimer” public on different vertical which dedicated to the axes, portion precisely way function in the same ’482’s as of term which extended be- device, springs the achieving yond on Sarkisian’s patent.34 the term of the ’696 271(c) provides portion part: application 32. 35 in relevant U.S.C. tial or all of § the earlier and component patented also adds “new a matter” not disclosed in Whoever sells machine, manufacture, of a the application. earlier combination or com- See of Manual Patent Ex- position, apparatus 201.08; or a material or for use in amination Practice § 35 U.S.C. 120. § patented practicing process, constituting a a invention, part knowing material of the the pursu- 34. Terminal disclaimers are submitted especially especially same or to made provides ant to 35 U.S.C. which in rele- adapted infringement use in an for of such part: vant patent, staple commodity not a or and article patentee, any A whether of the whole or of commerce suitable for substantial nonin- therein, may sectional interest ... make dis- use, fringing contributory shall be a liable as any claim, complete stating claimer of there- infringer. patent. in the of extent his interest such patent, court the infringement Because the invalidated ’482 finding the no court made as to of patent. the ’482 any patentee Because we hold that the ’482 applicant In may like manner or valid, (see III, infra), patent was Part we hold public disclaim or dedicate to the the entire contributory infringement that there was also term, any term, part or terminal of the of the patent. as to claims and of the ’482 patent granted granted. or to be Terminal disclaimer submitted to overcome patent application 33. The ’482 was a “continua- patenting problems portion double are of the application.” of part tion in part” application A “continuation in patent application’s the or term which application during would is an filed beyond expiration otherwise application by extend an the of the lifetime of earlier the the patent application applicant, repeats patent. Gholz, same which either a substan- The court, patent to the district the ’482 patent claims ’482 thus The of the 2,35overlap considerably represented impermissible attempt an here, to claims 1 and ob- patents invention, patent. claims tain two on the same the ’696 The with claims of however, are, violation of 35 patent the somewhat U.S.C. of ’482 broader; portions in the ’482 invalidated those of claims 1 spring mechanism and the claims in pair “spring overlapped a of the ’696 is claimed as patent view, means,” pair patent. the court’s analysis than as a of “coil our rather patent the this difficult law was compression, pat- as in ’696 area of incor- springs” in rect. Similarly, legs patent of ’482 ent. simply “ground engaging

are described potential patenting problem double means,” “gen- eliminating the limitation of typically arises when an inventor seeks mul- erally parallel” legs found in ’696 tiple patents way which relate in some to ent36 same invention. Double patenting problems two The district court held claims 1 and fall into one of classifications: “the “same patent patenting, of the claimed same” de- invention” double and ’482 patenting, in the “obvious” type vice as that described claims of double sometimes monopoly” ’696 the extent that the claims referred to as “extension dou- overlapped. According patents patenting. of the two ble CCPA, ground means, Patenting engaging upstanding 4 APLA an Law of Double Quarterly frame having relatively large Journal 262 n.7 structure a surface area indicia, receiving display spring a structure display comprising 35. Claim 1. A device an mounting base, structure onto the frame base, including pair said base of- unanchored spaced means, spring spring comprising said structure means apart elongated ground-engaging spaced apart connected at least at two loca- upstanding having frame structure an portion tions between the lower the frame relatively large receiving surface area for dis- base, spring structure and the said struc- indicia, play spring mounting structure normally maintaining base, ture the frame spring structure frame structure onto said upright being yieldable position spring in an comprising and means structure connected generally spaced apart along parallel either at two locations between the low- direction an axis base, portion plane permit er frame structure of the to the of the frame structure to being centrally spring thereof, said structure mounted downward deflection where the ground-engaging plane means with of the display designated accordance with substantially right-an- of the frame structure at gles following formula: longitudinal ground-en- axis of said Wf(Dg-Db) ± Wb Db. Where: means, gaging the surface area the frame weight Wf is the frame structure includ- being normally displace- of a size which causes ing spring weight structure. Wb is upon application ment of a suffi- the base Dg the base. is the distance from the center of thereagainst, spring said struc- cient wind force gravity frame structure to the bot- normally maintaining the ture frame structure length half the tom of base. Db is one being yieldable upright position in an substantially equal Dg. the base. Db is along generally parallel axis either direction an plane di- to the of the frame structure in the correctly district court found that longitudinal ground- axis of rection claims 2 the ’482 were and of filing entitled means, engaging the resistance to deflection of patent to the earlier date of the ’696 being spring spring such said structure application, spring as the means and the upon application of a structure will deflect ground engaging means claimed the ’482 necessary tip less than that the force thereto patent patent. were disclosed ’696 display permit device and downward deflection Corp. Technicon Instruments v. Coleman In structure, display where and the frame struments, F.Supp. (N.D.Ill. 641 255 designed device in accordance with the fol- is 1966), aff’d, 1967); 385 F.2d 391 see lowing formula: Moreover, 35 U.S.C. the formula set out § 120. Wf(Dg Db) Where: ± Wb Db. — patent in the claims of the ’482 which describes weight is the includ- Wf the frame structure operating principle the of Sarkisian’s device is ing weight spring Wb is the structure. the considered been disclosed the ’696 to have Dg distance from the center of the base. gravity is the patent patent simply the ’696 disclosed because sign frame structure to the bot- according operated the device to that which length half tom of base. Db is one the the Instruments formula. See Technicon v. the base. Instruments, Inc., F.Supp. at 641. Coleman display comprising an Claim 2. A base, elongated including said base unanchored “colorable variations the patenting invention” double arises of” claims the “Same pat- an inventor seeks to obtain two application.40 Finally, where first the inven- ents on the same invention. “Same Appeals, Court of and Patent in In Custom patenting runs afoul of the tion” double Vogel, re 57 C.C.P.A. 920 single a stricture of 35 U.S.C. § (1970) two-step process, out guided by set a for single shall issue invention. specific, criteria, analyzing workable Where, hand, on the invention other the potential patenting problem: double patent application claimed in a later is not test, good A probably only the first or “the same” that claimed test, invention,” objective for “same is “parent” application, but an is rather “obvi- whether one of the claims could be liter- the parent of that claimed in ous variation” infringed ally literally infringing without application, type double “obviousness” be, the other. If it could claims do enting is involved.37 identically not define inven- same major objection to “obviousness” tion. .. . certainly type patenting, though double not If it is determined the same inven- one,38 only granting is that the of multi- being twice, tion is claimed 35 U.S.C. ple patents may result in an unwarranted grant 101 forbids the of the second original patent’s monopoly extension patent, regardless presence or ab- period beyond time allowed law. sence aof terminal disclaimer. If the statutory current scheme rewards the same being invention is not claimed disclosing making inventor for the in- twice, question a second must be asked. 17-year monopoly vention with a on his or analysis question The second is: Does invention, during patentee her which the any application claim the mere- define making, using, can exclude others from or ly an obvious variation of an invention selling the subsequent device.39 Where a patent? disclosed claimed ... disclosing application an obvious variation If the answer to the second is granted of the initial is invention after the no, patenting there is no parent application double in- granted, has been original patent’s 17-year volved .... If the is monopoly imper- yes, is answer a termi- missibly until nal is subsequent pat- prevent extended disclaimer un- expires, denying ent its public statutory due time timewise monopoly. extension of right to use the invention at the end of the Vogel, In re Thus, at 441-42. monopoly period. Robeson, first re See In under Vogel, the parent appli- claims 610, 614, 51 C.C.P.A. cation must first compared be with application claims of the later to determine courts wrestled for some time whether the claims myriad problems, application of either metaphysi both semantic, literally could be distinguishing infringed cal and involved in literally without patent claims infringing which were “the same” claims of the from other. Pursche which merely Scraper those were “similar to” or Engineering Atlas & 8; appli- If the invention claimed second 39. I § U.S.Const. Art. cl. U.S.C. sufficiently patentable provides is pertinent part: cation novel to Section 154 right, patenting problem its own a double Every patent grant shall contain ... clearly only involved. It where the patentee, assigns, his heirs or for the term of second, application claims of the related do not years, right seventeen ... to exclude patentable disclose a device in its own making, using, selling others from the in- right may patenting problems that double arise. throughout vention the United States.... potential problems See, possible Plank, 241, g., n.5, 38. Other include 40. In re 399 e. F.2d 244 by multiple assignees, Eckel, (1968), harassment inconven- 55 C.C.P.A. 1400 In re 393 F.2d office, 848, patent 856, possibility (1968), ience to the and the 55 C.C.P.A. 1068 In Zicken- re draht, might attempt 225, 228-9, that one to avoid effect of 319 F.2d 50 C.C.P.A. 1529 wrapper by Siu, estoppel filing appli- (1963), n.2, file second re In 222 F.2d 42 270 Robeson, 610, 615, (1955). See cation. In re 331 F.2d C.C.P.A. 864 (1964). 51 1271 C.C.P.A.

689 us, denied, appears parties 371 It to do not (9th Cir.), and cert. 479-80 170 otherwise, L.Ed.2d objection suggest 83 S.Ct. that the sole U.S. so, at issue do (1962).41 If claims patenting present raised case double and, invention,” as “same define the danger patent may is the the ’482 pat claims, double “same invention” those monopoly extend the impermissibly “same invention” enting not involved. If is patent. The is thus whether the ’696 issue involved, it must is not patenting double the terminal disclaimer filed Sarkisian claims of whether the determined then be problem. patent the ’482 obviates that an “obvi application define subsequent that it We conclude does. claimed in of the invention variation” ous previously has indicated that This circuit do, then application. If parent patents subsequent patent applications or type patenting double “obviousness” type for double are not void “obviousness” made out. danger that long so as there is no patenting correctly conclud The district court application imper- will patent the later are patent the claims the ’482 ed that missibly original patent’s extend the mo- patent, ’696 the claims of the broader than Engi- v. nopoly. Scraper Pursche Atlas & infringe the might which that devices and Co., neering 480-81. While F.2d at might not patent of the ’482 literal terms patents involved a patent. Pursche series of ’696 infringe those of narrower concluded, however, erroneously expired day, on the without a simply same portion each claim disclaimer, that because articulat- principle terminal claim overlapped with some the ’482 case is fully applicable ed here: double patent, same invention in the ’696 patents the rule [voiding “. . . later extent.” patenting was involved “to some patenting] operate where double will not incorrect. this conclusion to be We believe its application the reason for absent.” the inven to determine whether In order Pursche, at 300 F.2d 481. subsequent by claims in the defined tion ef- We find terminal disclaimer invention was the “same” as the application dispensed fectively problem with the the entire parent application, in the claimed patent’s monopoly of extending the ’482 to, application each must be looked claim in patent beyond permitted time the ’696 totality is the claim taken as a since it statute, we court’s reverse the lower the invention.42 which defines finding invalidity. Vogel, test set obvi- forth Under in- type patenting clearly part, ousness double AFFIRMED in REVERSED in 2 of in this case. 1 and volved Claims part. application, in their entire-

the ’482 viewed ty, clearly broader than the claims CANBY, concurring in Judge, Circuit not define patent, the ’696 hence do dissenting part part. then invention. The “the same” all judgment I concur in and in should be becomes whether ’482 Judge opinion except Alarcon’s its thorough type double invalidated for “obviousness” “syner- patenting. requirement treatment of See, Pursche, g., as a e. Motion Patents Co. v. this test was described Picture 502, 510, Mfg. Co., requirement that there be “mutual cross- Film 243 U.S. must Universal 416, 418, applications. (1917), reading” claims of the two S.Ct. 61 L.Ed. 871 Continental Co., Scraper Engineering Paper Bag Paper Bag v. Atlas & v. Pursche Co. Eastern 405, 419, 748, 751, A at 479-80. claim “reads” on anoth- 28 S.Ct. 52 L.Ed. U.S. single (1908). change first where each recited in the er claim element of a or elimination Thus, appears may change claim. claim also second claim’s in a claim element con- claims “cross-read” when each claim scope completely, making two on an en- it “read” tains the same elements as the other. tirely range subject matter. different States, Whitney Pratt & 838, 842, Co. United 170 Ct.Cl. 690 Inc.,

gism”. difficulty joining quip, 1318, (9th I have no 1322 Cir. implied majority rejecting any sugges- 1979) Hoffman, in and Hershensohn v. 593 (1) validity 893, (9th pat- tion that of a combination As the term is cases, depends any upon ent literal sense “synergism” used these re- amounting quirement more than merely combination’s restates correct and (2) rigorous sum parts, requirement of its obviousness is to be of nonobviousness for judged hindsight, with benefit of combinations old elements. The same light but only prior usage Pro, art also of Ag reflected Sakraida v. disputed 273, 279, In rejecting 1532, 1536, innovation itself. 425 U.S. 96 S.Ct. however, I propositions, (1976) these would not 47 L.Ed.2d 784 and Anderson’s-Black reject concept well, Rock, “synergism” Co., Inc., Salvage Inc. v. Pavement 61, our 57, 308, because I do not deci- 396 understand U.S. S.Ct. 24 L.Ed.2d equated synergism (1969). sions to have other, re- That less defensible quirement rejected propositions. meanings may also be ascribed to the term In Penn International Industries v. Pen- is not a sufficient for discrediting reason nington 1978), Corp., F.2d 1078 “synergism” all its applications. I would example, this a combina- therefore avoid the being risk of misunder- “synergistic”, tion to be which it stood to be weakening the standard of equated well-recognized require- with the entability elements, for combinations of old “ ment the combination ‘an and would leave the doctrine of synergism surprising unusual or result’ ”. Id. at 1081. where we found it. It is not necessary to ruling, clearly so the court viewed its attack the doctrine to the judgment sustain requirement synergism case; proper as a for- this meets the mulation of the synergistic nonobviousness standard of standard. majority opin- interpreted as that standard was ion’s discussion of Sarkisian’s device in the Graham v. John Deere light U.S. art and of the state of skill in S.Ct. 15 L.Ed.2d 545 A similar supports field that conclusion. We need approach Satco, was taken in Inc. v. Transe- do no more.

Case Details

Case Name: Robert Sarkisian v. Winn-Proof Corp., William A. Werner, and Wer-Nel Enterprises, Inc., Defendants

Court Name: Court of Appeals for the Ninth Circuit

Date Published: Nov 27, 1981

Citation: 686 F.2d 671

Docket Number: 78-3270

Court Abbreviation: 9th Cir.