Vandenberg v. Dairy Equipment Co.
740 F.2d 1560 (1984)
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Rule of Law:
A patent claim is invalid for obviousness under 35 U.S.C. § 103 if the differences between the patented subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time of invention to a person of ordinary skill in the art. Evidence of secondary considerations, such as commercial success or copying by others, must have a nexus to the merits of the claimed invention to be relevant to the nonobviousness inquiry.
Facts:
- Ben, August, and Andrew Vandenberg developed and sold dairy equipment.
- In 1967, the Vandenbergs introduced a milk hose support system, known as PX-15, which used flat metal plates and fiberboard clutchplates for universal adjustment.
- In 1974, the Vandenbergs developed an improved milk hose support, the subject of the '575 patent, which utilized a ball and socket joint made from self-lubricating, high-grade nylon.
- Dairy Equipment Company (DEC), a competitor, also manufactured a support system using flat metal plates and fiber clutchplates.
- In 1980, DEC assigned its engineering technician, Jack Johnson, the task of designing a new support system.
- Johnson obtained one of the Vandenbergs' patented devices and used its exact dimensions to design a new milk hose support system for DEC.
- The resulting DEC device was nearly identical to the Vandenbergs' patented device, differing only in insignificant ways.
Procedural Posture:
- Ben W. Vandenberg and others sued Dairy Equipment Company (DEC) in the U.S. District Court for the Western District of Wisconsin for infringement of U.S. Patent No. 3,962,575.
- DEC asserted as a defense that the patent was invalid for obviousness and counterclaimed for attorney's fees.
- The district court (trial court) found Claims 1 and 3 of the '575 patent invalid for obviousness and, in its order, declared the entire patent invalid.
- The district court denied DEC's request for attorney's fees.
- The Vandenbergs, as appellants, appealed the district court's invalidity judgment to the U.S. Court of Appeals for the Federal Circuit.
- DEC, as cross-appellant, appealed the district court's denial of its request for attorney's fees.
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Issue:
Are Claims 1 and 3 of a patent for a milk hose support system that combines pre-existing elements invalid for obviousness under 35 U.S.C. § 103 when the prior art suggests the desirability of the combination to a person with ordinary skill in the art?
Opinions:
Majority - Skelton, Senior Circuit Judge
Yes. Claims 1 and 3 of the patent are invalid for obviousness because the subject matter as a whole would have been obvious at the time the invention was made to one of ordinary skill in the art. The court applied the Graham v. John Deere test and found that all the individual elements of the Vandenbergs' device were present in the prior art. The prior art included the Vandenbergs' own earlier PX-15 device, a patent for a lamp hanger using a ball and socket joint (Sorenson), a patent for a trailer hitch with a bolt passing through the ball (Draeger), and a patent for a joint made of self-lubricating plastic (Melton). The court reasoned that the prior art suggested the desirability of combining these elements, and a person with the high level of skill in this field would have found it obvious to improve the earlier PX-15 model by incorporating a self-lubricating plastic ball and socket joint. While DEC copied the invention, the court found this was not strong evidence of nonobviousness because DEC's engineers had independently conceived of using a ball and socket joint, suggesting the concept was obvious to those skilled in the art.
Analysis:
This decision reinforces the framework from Graham v. John Deere as the controlling analysis for patent obviousness. It illustrates that a combination of known elements is unpatentable if the prior art provides a reason or suggestion to combine them. The court's treatment of 'secondary considerations' is significant, clarifying that factors like commercial success or copying by a competitor carry little weight without a demonstrated nexus to the inventive merits of the patent. The case serves as a caution that even direct copying does not preclude a finding of obviousness if the underlying invention is merely a predictable combination of known elements.
