Republic Industries, Inc. v. Schlage Lock Co.

• Decision Date: 01 February 1979
• Docket Number: No. 77-1872,77-1872
• Parties: REPUBLIC INDUSTRIES, INC., Plaintiff-Appellant, v. SCHLAGE LOCK COMPANY, Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 963

592 F.2d 963

200 U.S.P.Q. 769

REPUBLIC INDUSTRIES, INC., Plaintiff-Appellant, v. SCHLAGE LOCK COMPANY, Defendant-Appellee.

No. 77-1872.

United States Court of Appeals, Seventh Circuit.

Argued June 5, 1978.

Decided Feb. 1, 1979.

William E. Lucas, John K. Lucas, Chicago, Ill., for plaintiff-appellant.

Henry L. Brinks, Chicago, Ill., for defendant-appellee.

Before SWYGERT, CUMMINGS and PELL, Circuit Judges.

SWYGERT, Circuit Judge.

Republic Industries, Inc., assignee and owner of the Slaybaugh patent, U. S. Patent No. 3,852,845, instituted this infringement action against Schlage Lock Company. Schlage counterclaimed, alleging invalidity of the patent and noninfringement. Without reaching the infringement issue, the district court in a thorough opinion held the Slaybaugh patent invalid for obviousness under 35 U.S.C. § 103 and entered judgment for defendant. Republic Industries, Inc. v. Schlage Lock Co., 433 F.Supp. 666 (S.D.Ill.1977). We affirm.

This appeal presents a recurrent problem: the proper criteria by which a combination patent is measured for nonobviousness. Increasingly, the district courts in this circuit, not without some confusion emanating from this court, have taken the view that synergism and not the criteria articulated in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), is the controlling test in combination patent claims. ¹ Before addressing this question, we review the claims of the patent involved in this appeal.

I

The Slaybaugh patent comprises nine claims. Claims 1 through 7 of that patent were not placed in suit by Republic; only claims 8 and 9 are alleged to be infringed. Since Republic concedes that the validity of claim 9 is dependent upon the validity of claim 8, only the latter claim will be discussed. ²

The invention of Slaybaugh's claim 8 is a door closer used to hold open and to close fire doors in hospitals, institutional health care facilities, and other public buildings. Republic argues that the Slaybaugh device achieves a unique combination of two functions in a single unit: (1) multiple-point hold-open, whereby a door can be held open at any point along the arc between its closed and fully opened positions; and (2) momentary manual release, whereby a door in any open position becomes self-closing when a person momentarily pushes or pulls the door. ³ The Slaybaugh patent was the first device in the history of door closers which combined these two features.

As illustrated by the schematic diagram below, claim 8 of the Slaybaugh device is essentially comprised of seven elements, each of which Republic concedes to be old and known: ⁴

(1) a door-closing main spring;

(2) a piston geared to the door and sliding within an enclosed cylinder, which is activated by the main spring;

(3) hydraulic fluid ⁵ in the cylinder ahead of (in the diagram, to the right side of) the piston;

(4) a fluid escape passage to the right of the piston (5) a dual area valve ⁶ which closes the fluid escape passage;

(6) a solenoid ⁷ which, by exerting a force on the valve, maintains the valve in a closed position overcoming the opposing force of the door-closing spring; and

(7) a drain behind the dual area valve to insure free valve movement, since accumulation of fluid behind the valve would block or interfere with valve movement.

In its commercial embodiment, Republic's unit, called Fire Eye II MR, is completely encapsulated.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

As the door is opened to any desired position (the multiple-point hold-open feature), a gear mechanism attached to the door causes the piston in the diagram to move to the left, thereby compressing the closing spring. The electrically controlled solenoid exerts a force on the valve to close off the fluid escape passage, thus preventing the fluid interposed between the piston and valve from escaping. Even though the closing spring is urging the piston toward the right, movement of the piston is blocked because fluid cannot escape from its chamber through the fluid escape passage when the valve is closed. The door remains open as long as the equilibrium between the opposing forces of the spring and solenoid is maintained.

An open door may be closed either automatically or manually. The door is closed automatically by deactivation of the solenoid. The solenoid is connected to an external circuit which usually includes smoke or fire detectors. When the circuit is opened, E. g., by the triggering of the smoke detector, the solenoid releases the force on the valve, thereby unseating it. Once the valve is open, the closing spring forces the piston rightward. The piston in turn forces the hydraulic fluid (interposed between the piston and the valve) past the valve through the escape passage. The gear mechanism attached to the piston swings the door toward closure.

The allegedly unique feature of the Slaybaugh patent is the momentary manual release. Unlike prior door closers which required manual assistance, ⁸ the Slaybaugh device requires only a brief pull or push on the door, whereby the door closes by itself. The force of the momentary pull together with the force of the closing spring are sufficient to overcome the solenoid's effect and unseat the valve, which, when open, allows the door to close by itself.

II

Schlage contends that the Slaybaugh device is invalid because it is merely a combination of old elements having no synergistic effect. It takes this position regardless of whether a synergism test is defined in terms of a combination that produces an unexpected, unpredictable, or surprising result or in terms of individual elements of a combination functioning in a new and different manner. Although it is unclear whether Schlage understands synergism to be a substitute for or an addition to the statutory requirement of nonobviousness as interpreted in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), it nonetheless argues that synergism is required by the Anderson's-Black Rock v. Pavement Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969), and Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976), decisions. A review of these cases, particularly when placed in historical context, demonstrates otherwise.

The Patent Act of 1793 required that a device had to be both new and useful to be patentable. Act of February 21, 1793, ch. XI, § 1, 1 Stat. 318. Thereafter a third criterion was judicially created: a device had to be an "invention" as well. ⁹ Defining "invention" proved to be elusive. Nearly a century ago, the Supreme Court said as much about the term:

The truth is the word cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not. In a given case we may be able to say that there is present invention of a very high order. In another we see that there is lacking that impalpable something which distinguishes invention from simple mechanical skill. Courts, adopting fixed principles as a guide, have by a process of exclusion determined that certain variations in old devices do or do not involve invention; but whether the variation relied upon in a particular case is anything more than ordinary mechanical skill is a question which cannot be answered by applying the test of any general definition.

McClain v. Ortmayer, 141 U.S. 419, 427, 12 S.Ct. 76, 78, 35 L.Ed. 800 (1891). The imprecision of the "invention" standard resulted in an inconsistent and unpredictable body of law because it required that the decision of patentability be based ultimately upon the subjective whims of the reviewing court. ¹⁰

Congress revised the patent laws in 1952. ¹¹ The novelty and utility requirements were maintained and recodified. 35 U.S.C. §§ 101, 102. The retention of these requirements did not, however, completely define the concept of patentability; missing was that essential quality which goes beyond mere newness or usefulness the "something" that the courts had unsuccessfully strived for by the use of the term "invention." In order to start afresh in a semantic sense and to promote uniformity in the application of the patent laws, Congress added section 103. ¹² That provision replaced the judicially imposed requirement of "invention" with that of "nonobviousness": ¹³

A patent may not be obtained . . . 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. Patentability shall not be negatived by the manner in which the invention was made.

35 U.S.C. § 103.

Section 103 received its definitive interpretation in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). There, the Court, in calling for "strict observance" of its requirements, laid out the analysis to be followed in cases involving the obviousness standard:

While the ultimate question of patent validity is one of law (citation omitted), the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.

Id. at 17, 86 S.Ct. at 694. It is against this backdrop that Black Rock and Sakraida must be read.

Black Rock involved a combination patent in which each of the elements were known in the prior art. ¹⁴ In that case the Court recited that it would adhere to the guidelines it had developed in Graham. 396 U.S. at 61-63, 90 S.Ct. 305. Using such analysis, the Court held the patent at issue invalid because "the combination was reasonably obvious to one...