Sakraida v. Ag Pro, Inc.

425 U.S. 273, 96 S. Ct. 1532, 47 L. Ed. 2d 784, 1976 U.S. LEXIS 146
Supreme Court of the United States·Decided June 21, 1976·No. 75-110·Published·Cited by 282 cases

Opinion

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 *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 dairy 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 certio-rari. 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 Dis *275 trict 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 *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 *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. . . . [UJnless that water is continuously directed toward the cleaning area the cleaning action almost ceases instantaneously. ...” 4

*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 *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:

“A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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.”

*280 The ultimate test of patent validity is one of law, Great A. & P. Tea Co. v.

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Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S. Ct. 1532, 47 L. Ed. 2d 784, 1976 U.S. LEXIS 146 (1976).

425 U.S. 273 (Sakraida v. Ag Pro, Inc.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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