Sakraida v. Ag Pro, Inc
Decision Date | 20 April 1976 |
Docket Number | No. 75-110,75-110 |
Citation | 425 U.S. 273,96 S.Ct. 1532,189 USPQ 449,47 L.Ed.2d 784 |
Parties | Bernard A. SAKRAIDA, Petitioner, v. AG PRO, INC |
Court | U.S. Supreme Court |
Respondent's patent covering a water flush system to remove cow manure from the floor of a dairy barn Held invalid for obviousness, it being a combination patent all the elements of which are old in the dairy business and were well known before the filing of the patent application. The system's exploitation of the principle of gravity to effect the abrupt release of water "did not produce a 'new or different function' . . . within the test of validity of combination patents." Anderson's-Black Rock v. Pavement Co., 396 U.S. 57, 60, 90 S.Ct. 305, 307, 24 L.Ed.2d 258, 261. Pp. 274-283.
Stephen B. Tatem, Jr., Winter Park, Fla., for petitioner.
J. Pierre Kolisch, Portland, Or., for respondent.
Respondent Ag Pro, Inc., filed this action against petitioner Sakraida on October 8, 1968, in the District Court for the Western District of Texas for infringement of United States Letters Patent 3,223,070, entitled "Dairy Establishment," covering a water flush system to remove cow manure from the floor of a dairy barn. The patent was issued December 14, 1965, to Gribble and Bennett, who later assigned it to respondent.
The District Court's initial grant of summary judgment for petitioner was reversed by the Court of Appeals for the Fifth Circuit. 437 F.2d 99 (1971). After a trial on remand, the District Court again entered a judgment for petitioner. The District Court held that the patent "does not constitute invention, is not patentable, and is not a valid patent, it being a combination patent, all of the elements of which are old in the dairy business, long prior to 1963, and the combination of them as described in the said patent being neither new nor meeting the test of non-obviousness." The Court of Appeals again reversed and held the patent valid. 474 F.2d 167 (1973). On rehearing, the court remanded "with directions to enter a judgment holding the patent valid, subject, however, to . . . consideration of a motion under Rule 60(b) (2), F.R.Civ.P., to be filed in the District Court by the (petitioner) Sakraida on the issue of patent validity based on newly discovered evidence." 481 F.2d 668, 669 (1973). The District Court granted the motion and ordered a new trial. The Court of Appeals again reversed, holding that the grant of the motion was error, because "the record on the motion establishes that (petitioner) failed to exercise due diligence to discover the new evidence prior to entry of the former judgment." 512 F.2d 141, 142 (1975). The Court of Appeals further held that "(o)ur prior determination of patent validity is reaffirmed." Id., at 144. We granted certiorari. 423 U.S. 891, 96 S.Ct. 186, 46 L.Ed.2d 121 (1975). We hold that the Court of Appeals erred in holding the patent valid and also in reaffirming its determination of patent validity. We therefore reverse and direct the reinstatement of the Dis- trict Court's judgment for petitioner, and thus we have no occasion to decide whether the Court of Appeals properly found that petitioner had not established a case for a new trial under Rule 60(b)(2).
Systems using flowing water to clean animal wastes from barn floors have been familiar on dairy farms since ancient times.1 The District Court found, and respondent concedes, that none of the 13 elements of the Dairy Establishment combination is new,2 and many of those elements, including storage of the water in tanks or pools, appear in at least six prior patented systems.3 The prior art involved spot delivery of water from tanks or pools to the barn floor by means of high pressure hoses or pipes. That system required supplemental hand labor, using tractor blades, shovels, and brooms, and cleaning by these methods took several hours. The only claimed inventive feature of the Dairy Establishment combination of old elements is the provision for abrupt release of the water from the tanks or pools directly onto the barn floor, which causes the flow of a sheet of water that washes all animal waste into drains within minutes and requires no supplemental hand labor. As an expert witness for respondent testified concerning the effect of Dairy Establishment's combination: "4 The District Court found that "(n)either the tank which holds the water, nor the means of releasing the water quickly is new, but embrace(s) tanks and doors which have long been known," and further that The District Court therefore held that Dairy Establishment "may be relevant to commercial success, but not to invention," because the combination "was reasonably obvious to one with ordinary skill in the art." Moreover, even if the combination filled a "long-felt want and . . . has enjoyed commercial success, those matters, without invention, will not make patentability." Finally, the District Court concluded: 5 The Court of Appeals disagreed with the District Court's conclusion on the crucial issue of obviousness.
It has long been clear that the Constitution requires that there be some "invention" to be entitled to patent protection. Dann v. Johnston, 425 U.S. 219, 96 S.Ct. 1393, 47 L.Ed.2d 692. As we explained in Hotchkiss v. Greenwood, 11 How. 248, 267, 13 L.Ed. 683, 691 (1851): This standard was enacted in 1952 by Congress in 35 U.S.C. § 103 "as a codification of judicial precedents . . . with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability." Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545, 556 (1966). Section 103 provides:
The ultimate test of patent validity is one of law, Great A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 155, 71 S.Ct. 127, 131, 95 L.Ed. 162, 168 (1950), but resolution of the obviousness issue necessarily entails several basic factual inquiries, Graham v. John Deere Co., supra, 383 U.S. at 17, 86 S.Ct. at 693, 15 L.Ed.2d at 556.
"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 resolved." Ibid.
The Court of Appeals concluded that "the facts presented at trial clearly do not support (the District Court's) finding of obviousness under the three-pronged Graham test . . . ." 474 F.2d, at 172. We disagree and hold that the Court of Appeals erroneously set aside the District Court's findings.
The scope of the prior art was shown by prior patents, prior art publications, affidavits of people having knowledge of prior flush systems analogous to respondent's, and the testimony of a dairy operator with 22 years of experience who described flush systems he had seen on visits to dairy farms throughout the country. Our independent examination of that evidence persuades us of its sufficiency to support the District Court's finding 6 Indeed respondent admitted at trial "that the patent is made up of a combination of old elements" and "that all elements are individually old . . . ." Accordingly, the District Court properly followed our admonition in Great A. & P. Tea Co. v. Supermarket Corp., supra, 340 U.S., at 152, 71 S.Ct., at 130, 95 L.Ed., at 167: "
The Court of Appeals recognized that the patent combined...
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