Ag Pro, Inc. v. Sakraida

• Decision Date: 05 February 1973
• Docket Number: No. 72-1108.,72-1108.
• Citation: 474 F.2d 167
• Parties: AG PRO, INC., Plaintiff-Appellant, v. Bernard A. SAKRAIDA, Defendant-Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

474 F.2d 167 (1973)

AG PRO, INC., Plaintiff-Appellant, v. Bernard A. SAKRAIDA, Defendant-Appellee.

No. 72-1108.

United States Court of Appeals, Fifth Circuit.

February 5, 1973.

J. Pierre Kolisch, Portland, Or., Frank H. Hunter, El Paso, Tex., for plaintiff-appellant.

J. F. Hulse, El Paso, Tex., for defendant-appellee.

Before RIVES, WISDOM and RONEY, Circuit Judges.

RIVES, Circuit Judge:

Ag Pro, Inc., plaintiff-appellant (hereafter plaintiff), sued Sakraida, defendant-appellee (hereafter defendant), for infringement of the D. J. Gribble, et al. (hereafter Gribble/Bennett) Patent 3,223,070, titled "Dairy Establishment." On the first hearing the district court granted defendant's motion for summary judgment. This Court reversed and remanded for a trial on the merits. Ag Pro v. Sakraida, 5 Cir., 1971, 437 F.2d 99.

On remand the trial was commenced and completed on the same day. The district court received suggested findings of fact and conclusions of law from both sides, adopted those of the defendant, and adjudged

"* * * that said Patent No. 3,223,070 held by Plaintiff 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 time as described in the said patent being neither new nor meeting the test of non-obviousness, Defendant is entitled to judgment."

(App. 175.)

Having held the patent invalid, the district court did not determine the issue of infringement. We reverse and remand.

The patent is limited to the construction and arrangement of the floor areas of the barn and the means for storing a volume of water on or immediately above the floor so that, when the water is suddenly released, it will clean all of the barn floor areas without the use of hand labor. According to the letters patent, all barn floor areas can be thoroughly cleaned in a very few minutes, where previously it took hours of labor and use of larger quantities of water to achieve an inferior result. The patent contains three claims, but only Claims 1 and 3¹ are here involved. (App. 18.) In simplified form, those two claims call for a dairy barn having the following elements:

1) A paved, sloped barn floor with downhill drains;

2) individual cow stalls elevated above floor level but designed to facilitate accumulation of cow excrement on the dairy floor;

3) paved feeding and milking areas integrated into the flush system;

4) a dam which collects water in a pool uphill from or directly on the dairy floor and abruptly openable to send a sheet of water cascading through the dairy sweeping the manure to the downhill drains.

Admittedly, all the elements are old. However, prior to this patent, the concept of a controlled sheet of water to do the scouring and washing of the floor had not been used in barn construction. The prior art involved the use of spot delivery of water by high pressure hoses. None of the prior art documents shows a floor washing means constructed to collect a pool of water uphill from or on the floor so that, when the water is abruptly released, it will flow as a sheet to wash almost instantaneously all barn floor areas and discharge cow offal into drains. That is the crucial element of this patent.

The plaintiff's patent is a modest commercial success. Over 70 dairies spanning the United States now utilize the patented manure flush system. Each installation is licensed under the patent pursuant to a one-payment, standard fee of $1500.00 plus $1.00 per cow. (App. 190, 191.)

A valid patent must be, not only novel and useful, but also nonobvious. 35 U.S.C. § 103. While the ultimate question of patent validity is one of law, a determination of nonobviousness rests on several basic factual inquiries. Those inquiries, prompted by § 103, are three in number.

"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."

Graham v. John Deere Co., 1966, 383 U. S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545.

The crucial issue of obviousness can only be resolved through reference to the precise facts presented, not through logical or intuitive analysis distorted by the invention's simplicity and retrospective self-evidence.

In the instant case, plaintiff presented cogent and convincing evidence that the gap between its patented system and the prior art was wide and ultimately bridged only by the inventive powers of Gribble and Bennett. In contrast, defendant did not supplement the prior art references initially available to the Patent Office, nor did he cite examples of simultaneous solutions. Instead, he merely relied upon three conclusory affidavits and the testimony of one witness who admitted that no similar device existed in the prior art. (App. 246.)

A short sketch of the evidence available to the trial court will highlight the lopsided factual foundation on which the determination of the patent's validity must rest.

(1) Evidence Presented by Defendant

While considering the Gribble/Bennett patent application in 1963, the Patent Office examiner had before him nine prior art patents and two prior art publications. Defendant introduced into evidence the two publications and only five of the patents. (Def. Exhibits 2, 3, 4, 5, 6, 7 and 8.) No other specific example of the prior art was revealed by defendant at trial.

Instead, defendant's meager presentation consisted of three cursory affidavits attached to the original motion for summary judgment and the solitary testimony of Mr. Robert Price at trial.

The three affiants, Sakraida, W. C. Fairbanks and Archie Sharp, each swore to have knowledge of prior flush systems analogous to the Ag Pro patent, and each volunteered the subjective judgment that appellant's invention was obvious. (App. 91-102.) These simplistic statements, rendered without the aid of cross-examination and devoid of specific illustrations of similar inventions, add little to an understanding of the prior art.

Defendant's single trial witness, Mr. Robert Price, who runs a dairy in El Paso, Texas, testified that certain elements of appellant's patented invention were known to the prior art, specifically, paved, sloped floors with downhill drains and raised stalls. (App. 239-249.) Yet, Mr. Price admitted that the patented dam-release flooding technique was novel even to him.

(2) Evidence Presented by Plaintiff

In contrast to defendant's paltry factual presentation, plaintiff developed a full and lucid view of both the prior art and its own inventive "breakthrough." Plaintiff skillfully juxtaposed the prevalent pre-1963 cleaning techniques with its own flush system and painted a convincing picture of a nonobvious advance.

Plaintiff supplemented its vivid documentary evidence, including picture brochures, magazine articles and a short film strip, with the testimony of George Huber, a retired agricultural engineer from the University of Oregon. Mr. Huber, properly qualified as an expert witness, provided the only technical analysis of the prior art. Mr. Huber carefully examined each of the five patents and two articles cited by defendant as representative of the prior art.² He came to the same conclusion previously reached by the Patent Office — none of defendant's prior art references anticipated plaintiff's invention.

The Supreme Court held in Graham v. John Deere, supra, 383 U.S. at 19, 86 S.Ct. 684, that 35 U.S.C. § 103, passed in 1952, merely codified pre-existing requirements and did not relax the standard for patentability. As early as 1851, in Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248, 13 L.Ed. 683, the Supreme Court posited the condition that a patentable invention must evidence more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business. That basic standard remains intact. Section 103 simply substitutes the term "nonobvious" for prior terms such as "invention" and "ingenuity" in order to emphasize the objective nature of the test and avoid the misunderstanding stemming from the controversial phrase "flash of creative genius" coined in Cuno Corp. v. Automatic Devices Corp., 1941, 314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58.

Thus, novelty, utility and wide commercial success are not enough to assure patentability. A combination is unpatentable, notwithstanding novelty and usefulness, if it is, in view of the prior art, an obvious expedient of a skilled worker in the art. See Deller's Walker on Patents, 2nd ed., § 71, p. 333. Hence, where the defendant in a combination patent infringement suit offers references to the prior art to negate patentability, those references may not be combined to anticipate the patented claim unless they suggest to one with ordinary skill in the art doing what the applicant has claimed.

None of the prior art references proffered by defendant in this case, independently or combined, suggest that plaintiff's novel flooding mechanism was an obvious advancement in the art. To the contrary, the record reveals that those skilled in the art reacted to the advancement with surprise (see App. 208; 266). Different evidence referring to truly analogous prior patents or simultaneous solutions might have compelled a finding of obviousness, but this record is devoid of such evidence.

Certainly, the gravitational principle that water runs downhill is both old and obvious; yet, plaintiff does not seek to patent gravity. Instead, plaintiff strives to acquire official recognition of its rights in a precise combination of mechanical components capable of harnessing a sudden rush of water to effectively clean a modern dairy barn. The prior art did not mother this audacious device; Gribble and Bennett's inventive faculties did.

The clearly erroneous standard of review is applicable to findings of fact in a patent case. See F.R.Civ.P....