SAKRAIDA v. AG PRO, INC.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT.
Argued March 3, 1976.
Decided April 20, 1976.
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 . Pp. 274-283.
512 F.2d 141, reversed.
BRENNAN, J., delivered the opinion for a unanimous Court.
Stephen B. Tatem, Jr., argued the cause for petitioner. With him on the briefs was James F. Hulse.
J. Pierre Kolisch argued the cause for respondent. With him on the brief was John W. Stuart. *
[ Footnote * ] Mary Helen Sears filed a brief for the Texas Farmers Union as amicus curiae urging reversal.
Helen W. Nies, Donald R. Dunner, and David N. Webster filed a brief for the Bar Association of the District of Columbia as amicus curiae.
MR. JUSTICE BRENNAN delivered the opinion of the Court.
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 [425 U.S. 273, 274] 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 diary 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 (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 District [425 U.S. 273, 275] 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 [425 U.S. 273, 276] 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 [425 U.S. 273, 277] 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: "[W]ater at the bottom has more friction than this water on the top and it keeps moving ahead and as this water keeps moving ahead we get a rolling action of this water which produced the cleaning action. . . . You do not get this in a hose. . . . [U]nless that water is continuously directed toward the cleaning area the cleaning action almost ceases instantaneously. . . ." 4 [425 U.S. 273, 278]
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 "their use in this connection is one that is obvious, and the patent in that respect is lacking in novelty. The patent does not meet the non-obvious requirements of the law." 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: "[T]o those skilled in the art, the use of the old elements in combination was not an invention by the obvious-nonobvious standard. Even [425 U.S. 273, 279] though the dairy barn in question attains the posture of a successful venture, more than that is needed for invention." 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, ante, p. 219. As we explained in Hotchkiss v. Greenwood, 11 How. 248, 267 (1851): "[U]nless more ingenuity and skill . . . were required . . . than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor." 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 (1966). Section 103 provides:
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 "as a fact that each and all of the component parts of this patent . . . were old and well-known throughout the dairy industry long prior to the date of the filing of the application for the Gribble patent . . . . What Mr. Gribble referred to . . . as the essence of the patent, to-wit, the manure flush system, was old, various means for flushing manure from dairy barns having been used long before the filing of the application . . . ." 6 Indeed, [425 U.S. 273, 281] 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, at 152: "Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. . . . A patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. . . ."
The Court of Appeals recognized that the patent combined old elements for applying water to a conventional sloped floor in a dairy barn equipped with drains at the bottom of the slope and that the purpose of the storage tank - to accumulate a large volume of water capable of being released in a cascade or surge - was equally conventional. 474 F.2d, at 169. It concluded, however, that the element lacking in the prior art was any evidence of an arrangement of the old elements to effect the abrupt release of a flow of water to wash animal wastes from the floor of a dairy barn. Ibid. Therefore, [425 U.S. 273, 282] "although the [respondent's] flush system does not embrace a complicated technical improvement, it does achieve a synergistic result through a novel combination." Id., at 173.
We cannot agree that the combination of these old elements to produce an abrupt release of water directly on the barn floor from storage tanks or pools can properly be characterized as synergistic, that is, "result[ing] in an effect greater than the sum of the several effects taken separately." Anderson's-Black Rock v. Pavement Co., 396 U.S. 57, 61 (1969). Rather, this patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations. Such combinations are not patentable under standards appropriate for a combination patent. Great A. & P. Tea Co. v. Supermarket Corp., supra; Anderson's-Black Rock v. Pavement Co., supra. Under those authorities this assembly of old elements that delivers water directly rather than through pipes or hoses to the barn floor falls under the head of "the work of the skillful mechanic, not that of the inventor." Hotchkiss v. Greenwood, 11 How., at 267. Exploitation of the principle of gravity adds nothing to the sum of useful knowledge where there is no change in the respective functions of the elements of the combination; this particular use of the assembly of old elements would be obvious to any person skilled in the art of mechanical application. See Dann v. Johnston, ante, at 229-230.
Though doubtless a matter of great convenience, producing a desired result in a cheaper and faster way, and enjoying commercial success, Dairy Establishment "did not produce a `new or different function' . . . within the test of validity of combination patents." Anderson's-Black Rock v. Pavement Co., supra, at 60. These [425 U.S. 273, 283] desirable benefits "without invention will not make patentability." Great A. & P. Tea Co. v. Supermarket Corp., 340 U.S., at 153 . See Dann v. Johnston, ante, at 230 n. 4.
[ Footnote 2 ] The District Court found as follows respecting Claims 1 and 3, the only claims involved in the case:
[ Footnote 3 ] The District Court found:
[ Footnote 4 ] This witness further testified:
[ Footnote 5 ] The court also concluded that "while the combination of old elements may have performed a useful function, it added nothing to the nature and quality of dairy barns theretofore used."
[ Footnote 6 ] The court stated: