Republic Industries, Inc. v. Schlage Lock Company

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 *965 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;

*966 (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.

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 *967 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

Sehlage 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 Sehlage 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 ease 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 *968 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 pri- or 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 with ordinary skill in the art.” Id. at 60, 90 S.Ct. at 307. Although during the course of its discussion the Court noted that a combination “may result” in a synergistic effect, 15 the Court went on to hold that the device in question “was not an invention by the obvious-non-obvious standard,” id. at 63, 90 S.Ct. at 309; this phrase could only refer to Graham and section 103.

Similarly in Sakraida, the Court scrutinized the combination patent in issue by considering the scope and content of the prior art together with the differences between that art and the claimed invention. 16 *969 In holding the patent invalid, the Court held: “[T]his particular use of the assembly of old elements would be obvious to any person skilled in the art of mechanical application.” 426 U.S. at 282, 96 S.Ct. at 1537. Although the Court again discussed synergism, it is apparent from the context of the opinion that the Supreme Court raised the topic only in response to the court of appeals’ assertion that synergism was present; the Court simply did not agree that the effect produced by the claimed invention in that case was synergistic. 17

Neither Sakraida nor Black Rock can be cited as prescribing some other, special test for the evaluation of combination claims. Nowhere in these two decisions did the Court hold a synergistic effect to be a necessary condition of patentability; nor did it hold that to synergism supersedes a finding of nonobviousness under the Graham analysis. To the contrary, each case quoted Graham with approval. Each turned on whether the claimed invention was nonobvious on the basis of the three-pronged test in Graham. In short, we believe that Sakraida and Black Rock, rather than establishing an additional, different, or substituted test for nonobviousness under section 103, reaffirmed the continuing vitality of Graham, 18

The district court, while agreeing that Black Rock and Sakraida did not establish synergism as a requisite for patentability, nonetheless interpreted cases from this court as requiring that every combination invention must have a synergistic effect to be patentable.

The synergism test necessarily involves a two-pronged hypothesis: (1) the subject matter of the patent claim comprises a combination of several elements, each of which was known in the prior pertinent art, and (2) the combination is synergistic or at least produces a synergistic “effect.” One premise of this hypothesis, at least as applied to mechanical or hydraulic devices, is that all such inventions are merely new applications of known elements and materials in different combinations. As Judge Learned Hand observed:

It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a “conbination”: that is to say, it consists of former elements in a new assemblage.

Reiner v. I. Leon Co., 285 F.2d 501, 503 (2d Cir. 1960), cert. denied, 366 U.S. 929, 81 S.Ct. 1649, 6 L.Ed.2d 388 (1961). 19 If this be true (and if new nonobvious combinations are not patentable), then almost nothing would be patentable. See Reeves Instrument Corp. v. Beckman Instruments, Inc., 444 F.2d 263, 270 (9th Cir.), cert. denied, 404 U.S. 951, 92 S.Ct. 283, 30 L.Ed.2d 268 (1971).

Once it has been determined that all of the elements in the combination are known, the next inquiry under the synergism approach is whether the claimed patent is synergistie or produces a synergistic effect. This has been no easy task. Courts have long wrestled with the meaning of synergism and have formulated a number of definitions. The two most common have *970 been that one of the elements functions differently in combination than it did previously, e. g., Burland v. Trippe Manufacturing Co., 543 F.2d 588, 592 (7th Cir. 1976), and that the combination results in an effect greater than the sum of the several parts taken separately. E. g., St. Regis Paper Co. v. Bemis Co., 549 F.2d 833, 838 (7th Cir.), cert. denied, 434 U.S. 833, 98 S.Ct. 119, 54 L.Ed.2d 94 (1977). 20 A realistic appraisal of these formulations, however, reveals that synergism is only a figure of speech, for in its literal sense synergism never has existed and never can exist in mechanical or hydraulic inventions when the term is defined as a whole result greater than the sum of its constituent parts. 21

There is, in fact, no such thing as a mechanical or hydraulic element functioning differently in combination than it did outside the combination. A spring or valve will always function as a spring or valve, alone or in concert with other components. 22 Moreover, mechanical elements can do no more than contribute to the combination the mechanical functions of which they are inherently capable. See Application of Menough, 323 F.2d 1011, 1015, 51 C.C.P.A. 741 (1963). Thus, the overall performance of the combination is always equal to the sum of the functions of its individual components. As Judge William Conner of the Southern District of New York observed: “In the real world, two plus two never equals five.” Some Highly Personal Reflections on Section 103, 5 Am.Pat.L.Q. 77, 85 (1977). Compare Great A & P Tea Co. v. Supermarket Equipment Co., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950) (“Two and two have been added together and they still make only four.”).

A definition of synergism that reflects its etymon is that the elements in the combination must cooperate or interact with each other. 23 So defined, synergism distinguishes those inventions in which the parts are merely aggregated, 24 and those in which the parts coact with each other so that the result comes from the combined effect of the several parts and not simply from the separate action of each. Under this formulation, the presence or absence of synergism proves little. Today, almost all mechanical devices consist of parts which interact with each other. This interaction has little, if anything, to do with the required nonobviousness of the claimed invention. Although the absence of interaction *971 may demonstrate the obviousness of the combination, the presence of interaction assuredly does not impart nonobviousness to a device clearly suggested by the prior art. As thus defined, synergism is simply too broad to provide a useful yardstick with which to measure patentability.

Putting the definitional aspects aside, there are more fundamental flaws in the use of synergism as a standard for patentability. In enacting section 103, Congress expressly mandated nonobviousness, not synergism, as the sole test for the patentability of novel and useful inventions: indeed, synergism is not even mentioned in the Patent Act of 1952. Moreover, as section 103 applies to all patent claims, there is no justification why patentability of a combination patent should be measured by a different standard than any other type of invention.

More importantly, when using the synergism approach to determine whet