Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc.
| Decision Date | 12 December 1986 |
| Docket Number | JEFFREY-ALLAN,No. 85-2728,85-2728 |
| Citation | 807 F.2d 955,1 USPQ2d 1196 |
| Parties | CUSTOM ACCESSORIES, INC., Plaintiff-Appellant, v.INDUSTRIES, INC., Defendant-Appellee. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Richard D. Harris of Dick & Harris, Chicago, Ill., argued for plaintiff-appellant. With him on the brief were Richard Eugene Dick and Max Shaftal of Dick & Harris, Chicago, Ill.
John C. Brezina of Brezina & Buckingham P.C., Chicago, Ill., argued for defendant-appellee. With him on the brief was David C. Brezina, of Brezina & Buckingham P.C., Chicago, Ill.
Before DAVIS and SMITH, Circuit Judges, and RE, Chief Judge. *
This is an appeal by Custom Accessories, Inc. (Custom), from a judgment of the United States District Court for the Northern District of Illinois, Eastern Division, holding invalid under 35 U.S.C. Sec. 103 claims 1 and 6 of United States Patent No. 4,264,083 (the '083 patent). We vacate and remand.
The facts recited in this opinion, unless otherwise indicated, are either uncontested by the parties or are findings of the district court not shown to have been clearly erroneous. FED.R.CIV.P. 52(a).
Mud flap or splash guard assemblies are commonly used on motor vehicles to prevent damage to the frame due to pebbles, salt, mud, and other debris thrown from the vehicle path by rotating wheels. They are placed in close proximity to a wheel and occupy a rearward position relative to the primary direction of travel of the motor vehicle. The assembly usually includes a splash intercepting body portion, such as a flat resilient flap or a rigid metallic plate of light construction, anchored by a fastener to a fender area of the vehicle.
The '083 patent was issued on April 28, 1981, to Matthew, et al., and was assigned to Custom. A reissue patent application was filed on June 23, 1981, in the name of the original inventors. On February 19, 1982, Pretty Products, Inc., filed a request for reexamination in light of nine references not considered during prosecution. On June 3, 1982, the United States Patent and Trademark Office (PTO) merged the reissue application with the reexamination proceeding. Custom then expressly abandoned the reissue application on June 17, 1982. Original claims 1 and 6 were amended during, and ultimately survived, reexamination. A reexamination certificate including those claims was issued on March 22, 1983.
Claim 1 reads as follows:
1. A splash guard or mud flap assembly for attachment to the fender of a motor vehicle, comprising: a flexible, splash-intercepting body portion: resilient, self-sustaining anchoring means for supporting the body portion and being adapted to be snugly engaged along the fender of a motor vehicle for securing the body portion in a splash-intercepting position thereon, said anchoring means including a front wall and a back wall resiliently integrally joined along one side in substantial overlying relation to one another and converging in the direction of the free ends thereof, the free ends of said walls being resiliently separable a distance to enable the anchoring means to be snugly frictionally engaged on a motor vehicle fender, the resiliency of the anchoring means being such that the front wall and the back wall thereof provide substantially the total gripping force for maintaining the anchoring means on a motor vehicle fender while providing a rigid support base for the splash-intercepting body portion of the splash guard, and an outwardly extending pin-like member carried on the front wall of the resilient anchoring means in spaced, inward relation to the free ends of said walls of the anchoring means for engaging and retaining said body portion on the anchoring means, said pin-like member being provided with locking means for securing and maintaining the splash-intercepting body portion on the anchoring means, said locking means being characterized in that it overlies and is in contact with a sufficient area of the splash-intercepting body portion to resist any forces tending to dislodge said body portion from the pin-like member.
Claim 6 recites:
A splash guard or mud flap assembly as claimed in claim 1 wherein the pin-like member of the anchoring means is provided with external threads for receiving a nut-like retaining member for securing and maintaining the splash-intercepting body portion on the anchoring means, said nut-like retaining member being characterized in that the base of the nut-like retaining member overlies and is in contact with a sufficient area of said body portion to resist any forces tending to dislodge the body from the pin-like member.
Custom filed suit in the district court alleging infringement by appellee Jeffrey- Allan Industries, Inc. (Jeffrey-Allan). Jeffrey-Allan denied infringement. It also raised as affirmative defenses and counterclaimed that claims 1 and 6 were invalid on the grounds of obviousness under 35 U.S.C. Sec. 103, improper inventorship under 35 U.S.C. Sec. 102(f), and overclaiming under 35 U.S.C. Sec. 112.
The district court judge entered judgment for Jeffrey-Allan for the reasons contained in a July 26, 1985, "Memorandum and Order" that constituted the court's findings of fact and conclusions of law. The district court found claims 1 and 6 of the '083 patent invalid under 35 U.S.C. Sec. 103, 1 but did not adjudicate any other issue. The Memorandum and Order does state, however, that "[d]efendant does not seriously contend that its splash guard assembly does not infringe."
Whether the district court erred in holding that claims 1 and 6 of the '083 patent are invalid under 35 U.S.C. Sec. 103.
OpinionSection 103 of 35 U.S.C. precludes a patent grant
if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. * * *
Though the ultimate question is one of law, a determination of obviousness under section 103 is based on these factual inquiries set forth in Graham v. John Deere Co.: 2 (a) the scope and content of the prior art; (b) the differences between the prior art and the claims at issue; (c) the level of ordinary skill in the art; and (d) objective evidence of nonobviousness. 3
Under Graham, a district court makes proper fact findings on those four inquiries and then assesses the ultimate legal question of nonobviousness. Thus, given the scope and content of the prior art, the differences between the claimed invention and the prior art, the level of ordinary skill in the art, and the existence of commercial success and any other objective considerations of nonobviousness, the district court determines whether the claimed invention would have been obvious to one of ordinary skill in the appropriate art at the time the invention was made.
At the conclusion of its 7 1/2 page Memorandum and Order, the district court for the first time cites Graham, stating:
This court concludes, in accordance with the teachings of Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Dual Mfg. & Engineering, Inc. v. Burris Industries, Inc., 619 F.2d 660 (7th Cir.) (en banc), cert. denied, 449 U.S. 870, 101 S.Ct. 208, 66 L.Ed.2d 90 (1980) and Republic Industries, Inc. v. Schlage Lock Co., 592 F.2d 963 (7th Cir.1979), that the use of that anchoring means rather than another in an old combination was, in the circumstances of this case, obvious within the meaning of section 103.
That fleeting reference to Graham does not convince us that the district court in fact properly analyzed obviousness using the Graham analysis. Indeed, Custom has persuaded us to the contrary. That Graham was not properly applied is evidenced by the district court: (1) improperly focusing on "a combination of old elements"; (2) ignoring objective evidence of nonobviousness; (3) paying lip service to the presumption of validity; and (4) failing to make sufficient Graham findings.
In assessing the patentability of Custom's device, the district court's Memorandum and Order refers to "a combination of old elements," which "is not necessarily an invention" but is entitled to patent protection if the combination "causes a new and useful result." Though it perceives one of the elements (the protruding pin in the anchoring means) as possibly novel, it states:
A U-clip with a locked pin surely was not itself patentable as an independent invention. Indeed, the plaintiff cancelled claims limited to the anchoring means during reexamination, when they were rejected as obvious. * * *
Such an approach is improper.
The dispositive question is not whether the claimed device is an "invention"; rather, it is whether the invention satisfies the standards of patentability. 35 U.S.C. Secs. 100-103. To suggest that Custom's new combination "is not necessarily an invention" or otherwise to require some concept of "inventiveness" or "flash of genius" for patentability would improperly misplace the focus of 35 U.S.C. Sec. 103. 4
That each element in a claimed invention is old or unpatentable does not determine the nonobviousness of the claimed invention as a whole. "There is no basis in the law * * * for treating combinations of old elements differently in determining patentability." 5 As stated in Stratoflex: 6
The reference to a "combination patent" is equally without support in the statute. There is no warrant for judicial classification of patents, whether into "combination" patents and some other unnamed and undefined class or otherwise. Nor is there warrant for differing treatment or consideration of patents based on a judicially devised label. Reference to "combination" patents is, moreover, meaningless. Virtually all patents...
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