Roberts v. Sears, Roebuck and Co.

• Decision Date: 14 March 1983
• Docket Number: 82-1958,Nos. 82-1886,s. 82-1886
• Citation: 217 USPQ 675,697 F.2d 796
• Parties: Peter M. ROBERTS, Plaintiff-Appellee, v. SEARS, ROEBUCK AND COMPANY, Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 796

697 F.2d 796

217 U.S.P.Q. 675

Peter M. ROBERTS, Plaintiff-Appellee, v. SEARS, ROEBUCK AND COMPANY, Defendant-Appellant.

Nos. 82-1886, 82-1958.

United States Court of Appeals, Seventh Circuit.

Argued Nov. 9, 1982.

Decided Jan. 14, 1983.

Rehearing Granted and Opinion Vacated March 14, 1983.

James G. Hunter, Jr., Latham, Watkins, Hedlund, Hunter & Lynch, Chicago, Ill., for defendant-appellant.

Louis G. Davidson, John B. Davidson, Sidney Neuman, Chicago, Ill., for plaintiff-appellee.

Before ESCHBACH and POSNER, Circuit Judges, and GRANT, ^* Senior District Judge.

POSNER, Circuit Judge.

Peter Roberts, the owner of a patent for a quick-release socket wrench, sued Sears Roebuck for patent infringement. The jury found the patent valid and infringed and awarded Roberts $5 million in damages (later raised to more than $8 million), and Sears has appealed, arguing among other things that the patent is invalid because "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." 35 U.S.C. Sec. 103. Obviousness is a question of law rather than of fact. Dual Mfg. & Engineering, Inc. v. Burns Industries, Inc., 619 F.2d 660, 661 (7th Cir.1980) (en banc).

A socket wrench has two parts (see Figure 1): the shaft

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

which the person using the wrench grasps and turns (labeled "10" in Figure 1), and a detachable socket (16) which grips the nut that the wrench is turning. Usually the wrench comes with a number of sockets of different size so that a single wrench can be used to turn nuts of different width.

The principle of the socket wrench is not new. The alleged novelty of the Roberts patent is in the mechanism, shown in Figure 2, for releasing the socket when

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

the user of the wrench wants to change sockets. The knob (22) at the top is the pushbutton (also 22) on the back of the head of the wrench (see Figure 1). Notice that the pushbutton is not depressed. In this the locked position, the pin (20) to which the pushbutton is attached is pressing a little ball (18) against, and partially through, a ring in the wall of the mechanism; since the diameter of the ring is smaller than that of the ball, the ball cannot fall out. In the locked position the part of the ball that protrudes outside the ring (24) is lying in a depression in the inner wall of the socket (not shown in Figure 2), and so holding the socket on the wrench. Pressing the pushbutton will force the pin down until the hollow space in it (26) is next to the ball, and the weight of the socket will force the ball into that space. There will now be nothing holding the socket to the wrench, and the socket will fall of its own weight.

This is the Roberts quick-release mechanism. It was a huge commercial success--though this may have owed a lot to Sears' promotion and marketing of it--because it made possible changing sockets with one hand. By holding the wrench face downward and pushing the pushbutton with your thumb you can drop off the socket attached to the wrench, and by keeping the button down you can insert the wrench into a different socket and then lock it onto the wrench simply by releasing your thumb. Roberts, an 18-year-old employee of Sears, came up with this design in six months. He obtained a patent, assigned it to Sears, later sued Sears for having defrauded him of his patent rights, and won that suit, see Roberts v. Sears, Roebuck & Co., 573 F.2d 976 (7th Cir.1978), 617 F.2d 460 (7th Cir.1980), which is unrelated to the present one.

In deciding whether an invention is obvious, "When all is said, we are called upon imaginatively to project this act of discovery against a hypostatized average practitioner, acquainted with all that has been published and all that has been publicly sold. If there be an issue more troublesome, or more apt for litigation than this, we are not aware of it." Harries v. Air King Products Co., 183 F.2d 158, 162 (2d Cir.1950) (L. Hand, J.). We must avoid the pitfall described by Benjamin Franklin: "There are every where a number of people who, being totally destitute of any inventive faculty themselves, do not readily conceive that others may possess it: They think of inventions as of miracles; there might be such formerly, but they are ceased." Letter to John Lining, March 18, 1755, in 5 Papers of Benjamin Franklin 521, 526 (Labaree & Bell eds. 1962). But the equal and opposite pitfall is to think every...