Earl Warren: Number 37 Calmar Incorporated, Petitioner, versus Cook Chemical Company. Mr. Lyons. Oh, yes and number 43, Colgate-Palmolive Company, Petitioner, versus Cook Chemical Company.
Dennis G. Lyons: Mr. Chief Justice, may it please the Court. This case started as two declaratory judgment actions in the District Court for the Western District of Missouri. They were brought by Calmar and by Colgate-Palmolive Company against Cook Chemical. Cook Chemical Company was the assignee of U.S. patent number 2870943 which was originally issued to Baxter I. Scoggin Jr. The declaratory judgment suit was brought after Cook had threatened these parties with an action for a patent infringement. And the declaratory judgment actions sought a declaration that the patent in question was invalid and a declaration that it was not infringed by the device that Calmar was making. Calmar was a maker of plastic spraying devices. Colgate-Palmolive was one of its costumers. It purchased these devices and used them on insecticide bottles. The -- there was then a counterclaim by Cook as there frequently is in patent declaratory judgments suits. A counterclaim for infringement and that injunction and damages were sought. The District Court found that the patent was valid; found that it wasn't infringed. Before passing on the question of damages under the Rule 54(b) the District Court certified that there was no reason for entering there -- that there is no reason for delay in entering a judgment on the issues of validity and infringement and under it such a judgment which was an appealable order. The Eighth Circuit on appeals by Calmar and Colgate affirmed the judgment of the Eighth Circuit. There were then petitions for certiorari presented to this Court, urging the Court to grant the petitions and to find the Scoggin patent invalid. And that was the question presented to the Court this morning. We have here a picture of the device that is disclosed in Mr. Scoggin's patent. This is on page 381 of the record. The device is essentially a sprayer of the sort that you buy in supermarkets that comes mounted in a bottle of insecticide were like. Here is the -- actually this is the -- yes this is the assignee of the patent, but this is a Cook Chemical's product sitting in this bottle here. What this consist of is a pump which goes down into the bottle -- the bottle would be down here. The pump itself is not patented. The pump is an old pump. There is nothing new about pump. What is new supposedly in the Scoggin patents is the idea of putting this cap over the pump and holding the pump down during shipment --
William O. Douglas: I didn't hear you, putting the what?
Dennis G. Lyons: Putting this cap.
William O. Douglas: Cap?
Dennis G. Lyons: Yes sir cap over the pump. Supposedly the new feature was putting that capital of the pump and affecting a seal within the cap.
William J. Brennan, Jr.: Now, before Mr. Lyons that there was no cap at all?
Dennis G. Lyons: Well, actually about 20 years before there was a device with cap on it in the bottle. In the manufacture of insecticides during the 1950's, neither of the -- of the companies that were making plastic dispensers were -- were making them with a cap. That was a cap in place. However, about 20 years before there was a comparable structure which we will show in a few moments. Previously the merchandizing technique, if you will, had been to take the bottle of insecticide, have a plain cap on it, have a paper collar attached to that cap, and have a sprayer attached to that paper collar. And there were certain commercial problems with that the --
Speaker: (Voice Overlap)
Dennis G. Lyons: Right. There are certain commercial problems with that the sprayers supposedly would fall off and go light so the idea that Scoggin suppose to come up with is to put the plunger into the bottle and put a cap on the bottle to hold the plunger down during shipment. So that when bought the insecticide or whatever product, you bought it with the pump already in place.
Potter Stewart: This was for shipping and storage purposes not for use by the consumer, right?
Dennis G. Lyons: Well, in order for the consumer to use it, the consumer, of course, have to remove the cap --
Potter Stewart: It is the function, you have to protect the business during a shipment and storage, is that it?
Dennis G. Lyons: Yes, sir. The device a little closer is this device here.
Speaker: That's with the cap.
William J. Brennan, Jr.: The white thing?
Dennis G. Lyons: The white thing is capped. It's a cap with the screw thread of the inside and there was a little -- oh I suppose the patent bar, we'd call a protuberance. There is a little thing inside here that affects a seal with the cap. Now the reason why there had to be a seal within that cap --
Speaker: A washer?
Dennis G. Lyons: It's not a washer; it's just a -- a part of the -- the plastic cap. It's just the way the plastic cap is molded, so to speak. The reason why there has to be a seal was that in the pumps at this time, there was no way of preventing the fluid from flowing up through the pump and out of the nozzle of the sprayer during shipment. Scoggin did go of any way to stop that.So the way that he chose to prevent leakage was to put a seal inside this cap. He put that seal right here up above the screw threads. Now, if you're going to have a cap sitting on top the --
Speaker: (Inaudible)
William J. Brennan, Jr.: Even though he put a seal there, would something still come out of that orifice in the pump and --?
Dennis G. Lyons: Something would come out thought -- something would come out of the hole in the pump here and it would -- it could fill up in here.
William J. Brennan, Jr.: But then the seal (Voice Overlap)
Dennis G. Lyons: If the seal were perfect. There certainly was the question about that. If the seal was perfect, it would stop it from flowing out and soiling during shipment. Now, starting from scratch, if there had been no prior right or whatsoever, we contend that it would be a very good to this proposition to hold about Scoggin's bottle cap, put down over the plunger and affecting a seal. It appears to be one of the very obvious places to put seal above the screw threads which is the same place where your seal exists in a garden hose company. Even without any prior art we would suggest very strongly that -- that would be an obvious thing to do. That that would not be an invention and that accordingly there would be no basis to issue Mr. Scoggin a patent.
Potter Stewart: To -- you don't question that this is narrow or as utility? You question only its quality of invention?
Dennis G. Lyons: It's certainly useful that there -- it had imperfection where it was certainly useful and the utility --
Potter Stewart: So the only issue goes to --
Dennis G. Lyons: Goes to invention.
Potter Stewart: Invention or whatever it is that's probably covered by Section103.
Dennis G. Lyons: What ever it a -- it's the standards. One might wonder -- anyway I've never thought of this before and actually the answer is, yes. In 1938, there was a patent issued to a gentleman called Mr. Lohse and this figure appears on page 477 of the record. This patent has all of the elements of the Scoggin patent. Here we have a plunger sitting on the bottle. Here we have a cap which is put down over the plunger and which holds the plunger down during shipment. Mr. Lohse, like Mr. Scoggin, didn't know how to seal down here inside the pump and to prevent the fluid from coming up and getting into the cap here. So he had to have the seal in the cap and actually there are two places where you could put the seal; you could put the seal below the threads or you can put the seal up here above the threads. What Mr. Lohse did was to put the seal down here below the threads and as what we've just seen what Mr. Scoggin did was to put the seal up here above the threads. I think if you're talking about places where you might put a seal in a bottle cap of the sort that that exhausts the two possibilities. Now when Mr. Scoggin first put in his patent application to the Patent Office, he had about 15 claims. Now, the function under the patent statute of the claims is to define the invention as to which the inventor claims a monopoly punishments of the patent. The first 15 claims that he put in were really broad enough to make -- to describe the Lohse device. There were entirely broad terms and they've described the function of a pump with an over-cap with a seal in an arrangement -- neutral arrangement, either like this or like his own. The Patent Office, to its credit, rejected that by citing the Lohse patent against us. Then there were a few other actions back and forth with the patent examiner writing to Mr. Scoggin. Mr. Scoggin taking up aggressively narrower and narrower claims until finally, the Patent Office issues him a patent when his claims have been narrowed down to describe the specific technique of his seal that is his placement of the seal up here, and the fact that he put a cap down there so that you could pack it. So that you could screw the cap down and before you got to the container cap itself, this seal here would catch, so to speak and he put the -- put a cap in there so that that wouldn't happen. Essentially, that was what the --
Speaker: (Inaudible)
Dennis G. Lyons: There was no evidence that the Lohse device lead to it and in fact there was evidence from the one of the officials of the company that merchandized the Lohse device that it was satisfactory. According to his recollection, this was a long time ago it was in the late 30s before the Second World War. But that was his testimony and it was not the --
Potter Stewart: The record of the claims of the patent in suit.
Dennis G. Lyons: The patent in suit starts at page 510 and the basic claim is the claim that appears denoted as number one on page 512. It's all one sentence and it's about 350 words long I believe.
Potter Stewart: Are all four claims of the patents in --
Dennis G. Lyons: The suit -- the claims one and two were the claims that were charged against per class.
William J. Brennan, Jr.: -- anything about the Lohse arrangement, did not do?
Dennis G. Lyons: No it did not, sir. Now, there -- as we say there are really only two places in which Scoggin put a -- could have put the seal in the bottle cap, below the threads or above the threads. I don't know if any further demonstration is necessary to show that it was an obvious thing to put the seal above the threads but we have found a few patents which disclose the idea of putting a fluid seal up above screw threads. The first one of these is a patent issued to Mr. Mellon in 1952. Here we have an arrangement which is quite like Lohse and quite like the ultimate Scoggin patent except that what you have here is a cap that fits directly down on the bottle rather than on the underlying bottle cap. In other words, in this arrangement you don't have the second bottle cap here but you have it in the Scoggin and the Lohse devices. But we cite this to show the positioning, the prior art in positioning a seal in an arrangement of this sort. Here, we have the seal put up here above the screw threads in a hold-down cap that holds down a pump which is exactly the same place and exactly the same technique that Mr. Scoggin's patent teaches. Actually, as I mentioned before the common garden hose is now even Mellon drawing as at page 457 of the record. The garden hose I believe uses the same technique with the washer inside. You will have a coupling with a screw thread and up above the coupling that you would have a rubber washer. So that when you plug the other element in, tighten them up the end of the one half of the garden hose would fasten and seal in your washer up here. There are other examples besides the Mellon patent of the particular technique of positioning the seal where Mr. Scoggin positions his. One rather interesting one is the patent, it's disclosed in the patent issued to a Mr. Livingston. This was in 1955 and again a few years before Mr. Scoggin's patent was applied for it. Mr. Livingston was dealing with hydrofluoric acid. Apparently, he was either an employee or on retainer; he had some relationship with the company that had to deal with hydrofluoric acid which is highly toxic. Now, this was dealt within flasks or bottles that have to have pouring spouts on the top, this is a pouring spout. And the pouring spout can be, in this patent, can be put into the bottle itself, here's the bottle, through a -- an arrangement which -- which holds it. Now, what Livingston's idea was, was to again take an over-cap or hold-down cap and depressed the pouring spout of it. And then effect a seal up here, in the very same place that Mr. Scoggin effected it, up above the screw threads that join the over-cap to the housing of the pouring spout here. Now, what this -- incidentally, what this was trying to achieve was as follows, The hydrofluoric acid would leak out of the pouring spout.There was no seal up here. And if you didn't have this arrangement here, which allowed it to flow black into the bottle, the fellow who opened up the cap would get the hydrofluoric acid on his hands. Now this permitted it to flow back down to the bottle. There was a seal up here which prevented it from getting out of the having the arrangement here. This seal, I think, is in the same position and performs the same function like the seal in the Scoggin patent.
Potter Stewart: How much a standing involved this prior art you discussed so far was before the examiner?
Dennis G. Lyons: The Lohse patent was before the examiner, that was the basis for his rejection all the early claims of Scoggin. The Livingston patent was not before the examiner. Mellon was before the examiner in the late stages. He does not that refer to it in the early stages. But, in the later stages of the examiner he surely did but Livingston was not. The examiner never found Livingston. Somewhat graphic way of showing what Scoggin did here and what Calmar did at about the same time though it's only a partial showing of what Calmar was doing. It is describe by this part. Here, we have a sprayer sitting in the bottle. This is a non-patented sprayer, the sort of sprayer was known in the prior art. The two prior sprayers that would -- did not have over-caps of these two manufactures. Calmar is just 20. It was shown here the prior to Cook, sprayers quite like that the Cooks sprayers called the Bakan 1. This advice here, that commercial device made under the Scoggin patent is called the Bakan 2. Bakan is a trade name of chemical uses. The -- take a Livingston type cap with your screw thread and you seal up here. And if you build up the surface here in order to receive what that is by putting the other element of the screw thread there and putting some element that will key into that. There what you produce equally is the device in which Scoggin got a patent and the device that Calmar produced that was held to infringement. Actually --
William J. Brennan, Jr.: Calmar got a patent of that?
Dennis G. Lyons: I think Cal -- Calmar later achieved the patent which was basically on the elements lower down in the bottle to which I'll address myself in a moment. The -- actually, the prior art thought of better type seal than the one that Scoggin had put in though this is hardly dispositive. It's -- Scoggin had the simple pressure type seal just to surface inside the bottle cap. Calmar, like the Livingston cap, had sort of the tongue-and-groove arrangement like this such as what you have in high quality wood flooring and the -- and the like, the tongue-and-groove arrangement. Actually, what Calmar did in the SS-40 that was important in the SS-40 did come out after the Bakan 2. Well, what Calmar did in the SS-40 was to provide internal seals, that is, it seals down in the bottom part of the pump and seals up inside here inside the pump and these seals prevent the fluid from getting into the bottle cap in the first place. And actually, that in turn is important because besides containing the fluid inside the bottle cap is a further question in this area, it's the question, what happens to the housewife when she opens the cap and the fluid that's in the cap might come out under the Bakan 2 arrangement. There is nothing that prevents it from getting up here into the cap under the Calmar arrangement. It would not get into the cap. If there were any commercial problems here and the respondent has talked about them rather than talking about the prior art. If there are any commercial problems here, they resolve by keeping the fluid inside the pump. Our contentions in this case are quite simple. Whichever way you phrase the standard, the Scoggin device is not an invention. Put it in the terms of Section 103, the modification that Scoggin did of the prior art of the Lohse patent simply consisted of an obvious modification. Taking a sealing technique that was taught in a number of prior art patents and in fact probably needed no teaching and simply using that is a modification of the Lohse device. The repositioning of the seal was obvious. It was not an invention. We suggest to the Court that there are two principal fallacies that were committed by the Patent Office and by the lower courts here that have combined and created the -- we submit, the necessity of this Court's reviewing and reversing the judgment here. The first, of course, is the fallacy of the Patent Office in granting countless patents while they can be counted there about 60 or 65,000 a year now. Most of which cover trivial modifications of prior art devices and a shocking number of which cover gadgets with the sort of this, that is involve in the suit. The claims as allowed in other Patent Office frequently are very, very narrow. But what happens is that these patents are licensed to sue. You can't bring a patent suit without a patent. Once these patents get into the courthouse there are these attempts to broaden them and to refer to the commercial history of what went on. And that I think is the fallacy that the lower courts committed which compounded the error that the Patent Office committed. The question is far as the lower courts were concerned and I have no quarrel with most of the language, they've cited all the right cases and they -- their quotations are accurate. But the -- again it's a case of the difference between the letter and the spirit. The basic question that the lower courts decided really was which manufacturer of plastic sprayers for insecticides in the late 1950s was the first to reach the market with the sprayer that could be shipped in place. And Bakan Cook Chemical did come out of the whole bit before Calmar. The lower courts lost cite of what is the essential question whether in terms of the prior art, there was an invention, there was an advance that was not obvious. There was an advance that was not part of the everyday work of the engineer whether working in plastics or working in whatever fields. Whether there was something here that transcended the routine. That is, we suggest, the basic error that was committed by the lower court. We submit that it was an error of law and that this Court is perfectly free to correct it.
Speaker: Now, what is this test, the commercial test that this problem is irrelevant to the equation of obvious and not obvious --
Dennis G. Lyons: They're not totally irrelevant. I think this Court has not said they are totally irrelevant. This Court has said they are adequate.
William J. Brennan, Jr.: Why the industry have to keep working so hard when they have the Lohse device for so many years?
Dennis G. Lyons: Well, the reason why Calmar was working, it was because they wanted to develop the internal sealing in this device. There are lots of prior efforts that the respondent cites were unsuccessful on the part of Calmar. But all of those efforts were not aimed in the direction of simply putting a cap over the plunger and holding the fluid inside the cap. They were --
William J. Brennan, Jr.: They were related to the Scoggin's device --
Dennis G. Lyons: -- they --
William J. Brennan, Jr.: You told me earlier that the Lohse device had worked just as effectively as Scoggin. He didn't add anything to the commercial value of the Lohse device.
Dennis G. Lyons: Right.
William J. Brennan, Jr.: Am I correct in that instance?
Dennis G. Lyons: That's correct, sir.
William J. Brennan, Jr.: Well, why -- why they keep pressing at it so far that I didn't quite understand. What --
Byron R. White: Why --
Dennis G. Lyons: What --
Byron R. White: -- didn't use those (Inaudible)?
Dennis G. Lyons: Because they're attempting to make a -- the reason why Calmar was not -- was to -- because they wanted to make a seal down below and inside the bottle. And not free allow the flow to get up into the cap.
William J. Brennan, Jr.: But why -- why --
Dennis G. Lyons: I suppose there were reasons of -- there may have been reasons of a company as to -- as to why Cook used its positioning of the seal which of course again is an old positioning of the seal. In Lohse, you have to have a washer on top of the bottle cap and in their device even though at first it didn't work until they later adopt the seal which was like the petitioner's. In their device you could get by -- simple by molding the plastic and as a result that they really bring out the device according to the record that cost about depending on the piece. But that -- the claim was the only --
William J. Brennan, Jr.: Well, let me see that -- really I guess Lohse just wasn't used, is that it?
Dennis G. Lyons: Lohse was used in the late 1930s and then wasn't used again.
William J. Brennan, Jr.: And that's all? And meanwhile they were using other things and the bottles leaked until they came up with this one, isn't it?
Dennis G. Lyons: Until they -- in effact rediscovered Lohse, I don't know if he actually knew about the Lohse patent or not, but by doing some -- by using something that was available in the common stock of prior inventions or was an invention even in 1938. But in the prior stock of knowledge this --
Potter Stewart: Lohse doesn't (Inaudible) of something like (Inaudible) into Columbus?
Dennis G. Lyons: I can't -- I can't get into that question, Your Honor. If Your Honors please, we appreciate the opportunity and regret the necessity of coming before you this morning and telling you about a series of bottle caps. But for the reasons we have set forth, we believe that this exemplifies the situation both in the Patent Office and in some of the opinions of the lower courts.
Potter Stewart: Mr. Lyons, was there any -- I think you're concluding but before you do, was there any talk in the Eighth Circuit opinion in this case about the necessity of a new result?
Dennis G. Lyons: No, I don't believe that -- as I remember of that it should not --
Potter Stewart: That didn't get into this opinion.
Dennis G. Lyons: -- (Voice Overlap) by this panel of the Eighth Circuit.
Hugo L. Black: (Inaudible) the Eighth Circuit have decided in favor to that (Inaudible)?
Dennis G. Lyons: I think this may have been a little bit after -- after the Graham case but I -- it was one of the Eighth Circuit decided in favor of the patentee.
William J. Brennan, Jr.: That's a different panel, the one --
Dennis G. Lyons: It's an entirely different panel from the one in the --
William J. Brennan, Jr.: New judges --
Dennis G. Lyons: From the -- the one in Deere, yes.
Hugo L. Black: All of them?
Dennis G. Lyons: I believe all three. There's no -- no overlap. Thank you, Your Honors.
Earl Warren: Mr. Schmidt.
Gordon D. Schmidt: Mr. Chief Justice, may it please the Court. I think if respondent's position were to be boiled down to a word, it would be that we consider this to be a key case not from the standpoint of this invention be in world shaking or that the world could not have got along without it. That because in this case, it is now possible for the Court in our opinion to remove a substantial amount of confusion that has been going on for years in the lower courts. This Court has the opportunity in this case to set some guidelines and some rules and some regulations that the lower court is looking for their needing help. They want help by a compassion for the problem that they have in determining whether or not an invention is obvious or whether it is not obvious. It is our position that the Eighth Circuit in this case took the right approach. Certain Negro doctrines were set forth that this Court can adopt and can do so without having to change any laws or without having to dig up some new principle not heretofore heard of. What the Cir -- Eighth Circuit did in this case, was to first look at the statute, finding that statutorily, there are three conditions for patentability. It must be new, it must useful and then under 103, it must not be obvious. But the Fifth Circuit did not stop there. As soon as it applied the statute, it went into a determination of what this Court, the Supreme Court, had said in the patent. And it said that, “In order to be patentable, an invention must meet high standards.” A mention was made earlier this morning of whether or not the last sentence of 103 is of any consequence. And the question was raised as to whether or not 103 changed the law. The Eighth Circuit went back from 35 years and I find the Eighth Circuit has been applying exactly what 103 has said for smaller than 35 years. They cited a case of Pearce versus Mulford which we set forth in our brief at pages 31 and 42 and which the language, almost identical language of 103, is used. Now, if there's any change in 103 over and above what has always been the law of this Court would perhaps be in the last sentence and we can only say that maybe the Supreme -- the Congress was intending to say, “We don't like to hear the Court say flash of genius.” Well, the irony of that is the only reason this Court ever use the word “flash of genius” was to make a point. This Court has said over and over again the standard must be high.” They have used all kinds of language to make that point clear. And one way to do it is to say there must be a “flash of genius”. So Congress early in the last sentence had in mind that there shall be no more “flash of genius”. But be that as it may, that is not our argument in this case. We go along with the concept that there must be a high standard of invention. 103 merely says that the condition for patentability that has not before been in the statutory law is that it shall not be obvious to one skilled in the art. Now, how was the law applied in the Eighth Circuit? In this case, first of all, the Eighth Circuit found that the Scoggin invention was new. Now, it's not very difficult. The law is clear, any eighth grade school boy could understand what you mean when say that a device must be new as distinguished from something that is old. Number two, the Eighth Circuit followed 102 in determining that there was novelty that -- and that there was utility, I'm -- I'm sorry 101 on utility. And the way they found out was to determine if there was widespread use, that there had been a success, and there had been acceptance. Certainly, if there were no utility, those conditions would not have existed and for that reason the Eighth Circuit said the device was useful.
Earl Warren: We'll recess now. Mr. Schmidt, you may continue your argument.
Gordon D. Schmidt: Chief Justice, may it please the Court. In a few moments, I shall enumerate and briefly discuss 18 reasons why the Eighth Circuit held this patent valid. But before doing this so, I should like to first continue an attempt to clear up some of the confusion as to the law and how it was applied by the Eighth Circuit. The question was asked this morning whether or not the Eighth Circuit has ever interpreted 103. I do not recall the answer but in my opinion, it has not. In the Blue versus Dempster case which we cite, a 1960 case, at pages 41 and 42 of our brief the Eighth Circuit said, “In applying 35 U.S.C.A. 103, this Court follows the standards of patentability set out by the United States Supreme Court in the NP case. And that's as far as the Eighth Circuit has gone. What they do -- what the Eighth Circuit has done and which we submit should be done by all of the circuits is to first consider the law, the statutory law, determine whether or not the invention is new, determine whether or not it has utility and then attempt to determine whether or not it was obvious to one skilled in the art. The problem and the difficulty, is determining whether or not it is obvious. Each court is called upon to within -- but a few hours understand the principles of every art that might come before him. Whether it'd be chemical, electrical, or something simple, he must understand it and determine for himself whether or not it is obvious. I submit that this should not be the whim of the judge and how he happens to feel about the particular art that he is considering. Did I submit that there are ways to determine whether or not it is obvious? And these are the 18 points that I intend to discuss, the 18 guidelines, the 18 signposts. They are referred to many times as make ways. Our adversary in this case refers to them as something irrelevant to this case. We say that it is abundantly rel -- relevant if it were not for that. If we were not to look at these 18 points, these 18 guide posts, then all we have is the statute which says it shall not be in obvious and we have the judge. And the appellate court and this Court having it determined for themselves whether or not it is obvious simply by listening to one bit of evidence where experts will say, “Yes, it was obvious” and another says, “No it was not obvious.” And we get nowhere.
Hugo L. Black: May I ask you of your 18 points that set out in your brief at one page --
Gordon D. Schmidt: Yes, Your Honor.
Hugo L. Black: What page? Is there one page of it?
Gordon D. Schmidt: They are scattered throughout the brief. I do not have them enumerated.
Hugo L. Black: Well, I thought from the argument maybe you might have them.
Gordon D. Schmidt: No. But I shall point this out that in all 18 points except one, this Court has passed on it and it said this is something to be looked at to be determined whether or not this invention should be held valid or invalid. One point I could not find any law and although I suspected that it has come up before. Again before going to those 18 points, I'd like to take up this question of fact or law again which seems to be a confusing thing. At the Eighth Circuit level counsel, my opponent was asked the very the same question and I was asked the question, do we have facts? Questions are, do we have law of questions? Counsel said it's a question of mixed fact and law.I say that begs the issue, that doesn't tell us on anything. Let's go back to grave -- to Goodyear Tire versus Ray-O-Vac where this Court in 1944 said that it must a strong case before this Court was set aside concurrent findings. A little bit later in Graver versus Linde in 1950, this Court emphasized Rule 52 (a) to be sure there was a dissent in the case. But later on in the AMP case again the question came up as to whether or not the concurrent two court rules should apply. This Court was not -- it was not necessary for this Court in the AMP case to decide that one way or another because the Court said that there were no substantial dispute and findings. And therefore, the AMP case stands for a principle of law which simply says that when you have a claim -- when you have a combination claim, that includes a new element and that is always new, you should claim that element and not claim it as a new combination. We have no difficulty on combinations of old elements. It's very simple. If you got a number of old elements in the combination, the only question is whether or not that combination is new. The difficulty is when you find the invention to be only in one element and that element is new. And the Court has said, “You must claim that, otherwise, you're overclaiming your invention.” That Patent Office says to us over and over again, “You have an old and exhausted combination that you're claiming if you think this is a new claimant.”
Hugo L. Black: What -- what is yours?
Gordon D. Schmidt: In our case, we have a combination of old elements. There isn't a single element in the combination that is new. We have not claimed it. We cannot be accused of overclaiming. We have claimed only the combination. We said that combination is new and that it has never been done before and it has utility and it is not obvious. So we get down to what is the proper approach. And we find that as a conclusion of law, the question of validity is to be determined by the Court. But until we come to that final question of validity, there are a number of facts that must be considered. Otherwise, we're deciding that in evacuant. Now, the 18 points, Number one, the record has established clearly that there was a need for this invention; that the need existed for a long, long, time. And one time, the liquid was dispensed with a hand sprayer, a tin hand sprayer. Later on, the sprayer -- the plastic sprayer was hung on the side of the bottle through a cardboard holder. What was needed was a shipper sprayer; a sprayer that could become and then it will go part of the package. It would not leak. It would not break. It would not become lost or pilfered. Calmar and its costumers knew of that need. Number two, we had a problem. The record establishes -- it establishes the fact that the -- that the problem was baffling. The petitioner say, “Supposedly there was a problem but their own witnesses have admitted over and over again that they -- that they could not solve the problem. The problem was that you can't simply place the square inside the container and let it go with that because it will leak and it will get broken. Hanging it on the side was not the solution. It had to do five things. It had to hold that sprayer depressed. It had to house to protect the head against damage. It had to prevent leakage to the outside and onto the label. It had to remain sealed after it had been once sealed at the factory. At the time the sprayer is made in this condition, they cover copy and sealed in place and then it can be subsequently placed in the container and the container cap -- the metal container cap can be sealed through automatic machinery without disturbing the seal between the cover cap and the collar. Those were the things that Mr. Scoggin had to solve. Those -- those were the problems. Point number three relates to the skill and the experience. This Court has said many times that if no one has been trying to solve this problem, if this is what we call a “wouldn't it be nice invention”, and we have many of those. People come in daily and say, “Wouldn't it be nice if have this one? Wouldn't it be nice if we have something else?” That is not what we have here. We have the skill and the experience of Calmar who had been a leader in the industry in making sprayers long before this invention. They knew what they were doing and yet they couldn't solve the problem. They had many engineers on their staffs. They had many inventors who had previously invented and obtained patent.
Hugo L. Black: Was -- was that Calmar have sold a business or was he engaged in the businesses of selling the fluid in the bottle?
Gordon D. Schmidt: No, no. Calmar was initially formed for the purpose of making plastic sprayers and then they when went on -- 0
Hugo L. Black: Plastic what?
Gordon D. Schmidt: Plastic sprayers of the type that preceded this invention without the cover cap, the ordinary sprayer. And then ultimately they were acquired by the Drackett Company and the Drackett Company of course makes many liquid products and uses a sprayer. Number four, I term, the begging for an answer. Now, this is where I cannot find any decisions by this Court saying that this is a factor to be considered in determining whether or not an invention is patentable and determine whether or not the invention was obvious or not obvious. But we did have urgent pleas to Calmar by its costumers including Cook, the respondent in this case, for many, many years for the answer. Over and over again, Cook says, “Will you please come up with something that can be use as a shipper sprayer that will not leak and will not break?”
Hugo L. Black: And would not what?
Gordon D. Schmidt: Would not break -- would not break --
Hugo L. Black: Leak or break?
Gordon D. Schmidt: Break -- break the sprayer. Because hanging it on the side we had the breakage problems. If you try to merely put in the -- top of the container, it obviously would break in shipment long before you ever got to the housewife. Number five, I term the struggles, now the --
Hugo L. Black: Well what -- what --
Gordon D. Schmidt: The struggles --
William J. Brennan, Jr.: Well, what about the man before you leave, it if you don't mind. What about the (Inaudible)?
Gordon D. Schmidt: As -- I heard you this morning, that's a good question. And the answer is this. Lohse was on the market in about 1944, a few months and a few thousand of their sprayers was actually for -- was actually produced and sold. Then the product was -- came off the market. Now why the evidence doesn't show? So far as the Lohse people themselves were concerned, they don't have -- they don't say why they ceased.
William J. Brennan, Jr.: So why was Calmar searching so hard for something else if that -- that's so quick.0
Gordon D. Schmidt: That's our point. That's our point exactly. If Lohse is so good -- if --
William J. Brennan, Jr.: Well, I can see that that helps you, does it? If -- if Lohse was really a -- dispositive prior art, what difference does it make that Calmar didn't make use of it and decides to find something else of its own.
Gordon D. Schmidt: The point that we make is that if Lohse is good and that Lohse anticipates our invention and that Lohse will lose the job, why did they infringe? Why did they copy us? Why did they come up with a dead ringer as the courts below had said?
Byron R. White: Well why did you --
Gordon D. Schmidt: And the answer -- pardon me.
Byron R. White: -- why did the -- why did your men go to work and do something that don't -- if the Lohse had already solved that?
Gordon D. Schmidt: Because Lohse would not solve the problem and the reason --
Byron R. White: What's wrong with that?
Gordon D. Schmidt: That Lohse would not solve the problem and the testimony shows that you cannot seal effectively on top of the Mellon container cap for several reasons. Number one, the gas that that must be used becomes absorbed with the material, I'll assume this. Number two, these container caps are not uniform. They're not perfectly smooth on top. You can never get a solid seal. And number three, when you attempt to use Lohse and put it into a container and use automatic capping machinery, you break the seal that you attempted to establish in replacement. That is why Calmar did not use Lohse, that is why we are not using it today, and that is why Scoggin don't --
Byron R. White: That it didn't work?
Gordon D. Schmidt: That would not work.
Byron R. White: You didn't talk leakage problem the one --
Gordon D. Schmidt: Right. It would not solve the leakage problems, it would not permit you to use automatic machinery in -- in putting the sprayers in place, and it would break the seal if you tried it. Now, that is what the evidence shows and to say that -- that it would work is contrary to what the finding of the two lower courts.
William J. Brennan, Jr.: That's your finding about Lohse and the --
Gordon D. Schmidt: There is a finding that --
William J. Brennan, Jr.: -- to lower courts?
Gordon D. Schmidt: Yes sir. There's a finding in the court below to the effect that Lohse. That Lohse was -- they did consider Lohse and they determined that Lohse was not successful, had not been on the market. Anyway the lower court indicated it did -- did the lower court indicated that he recognized that Lohse had been used but that had been some 25 years ago and it come off of the market. And he recognized the testimony of the experts, Mr. Scoggin himself, to the effect that it would not work and he enumerated the reasons why it would not.
Hugo L. Black: Is that finding to which you refer part of the Court's opinion? I just want to look at it if it won't bother you. If this bothers you, I'll find it.
Gordon D. Schmidt: It's a -- it's not set out as a specific finding. No. Its -- it's all a part of the opinion. It's all I --
Hugo L. Black: Part of the --
Gordon D. Schmidt: The trial court. Right. I mentioned as number five, the struggles that the parties had in attempting to come up with an answer. Device after device was tried by Calmar.Suggestion after suggestion was either tried or submitted. They all failed. With respect to the affairs, many futile attempts were made to fill the need. The president of Calmar and the vice president Drackett testified that he had said in grievous experiences in trying to solve the problem. At the time that Scoggin invention came on the market, they were still trying to perfect an old leaker called the LP-25. S. C. Johnson tried to solve there problems for them, they put a cellulose cap on top of the LP-25 to keep it from leaking. That was not satisfactory. In other words, they were goaled by frustration and disappointment. And this Court has heretofore indicated that that is one factor to be considered when determining whether or not a patent is valid, and whether or not it is obvious. This Court is also --
Hugo L. Black: Are you saying that that just a -- you consider the most valuable part of it -- the leakage problem that they solve that.
Gordon D. Schmidt: Yes, yes. And the -- well I -- I don't know but there is any one most valuable the leakage problem is the lack of breakage, number two.
Hugo L. Black: Lack of what?
Gordon D. Schmidt: Breakage. Preventing breakage.
Hugo L. Black: Leakage and breakage?
Gordon D. Schmidt: Yes. And then number three, making it possible to put this on the bottle at the bottling factory in a way that when you attach the Mellon caps, you do not disturb the seal between the cover cap and the collar inside above the cover cap. Counsel said this was a thing I -- I have some passion for him to here too, it's called a -- it's called a rib. It's a part of the cap inside, it's a rib that cooperates with the shoulder on the collar and that affects the seal. That seal must be there, it cannot be down below on the metal cap like in Lohse because if that is, you have leakage, you break your seal and the gasket will absorb the moisture it just won't work and that is why it has not been adopted by Calmar or by Cook. So we must consider the fact that Baxter Scoggin did come up with the solution. And this Court again had said, “If we can find that the problem was really elect and this is a solution to the problem that must be considered in determining whether or not the invention was obvious and patentable.” They must consider the results of this solution. This is open up in many, many new fields. In the Cuno case, in the Cuno versus Automatic case, it was pointed out that the result was old. And that was one factor considered by this Court in determining that the invention was not patentable. In our case we have just the opposite, the results are new. It's not only used on insecticide, it's used on virtually every liquid. It's branch start into the field of window cleaners and hair sprays, and polishes, and veterinary product, chemicals of all kinds and medicines. Number nine, the manner of arriving at the solution. There is -- the petitioners have vacillated in our opinion as to what is the invention? We have defined the invention. We defined it three times in our brief. It was adopted by the courts below. And our petitioners say that we are doing a very fine job of defining the invention and yet they vacillate. They tried to say, “The invention relied in the seal, a particular type of seal. It relied in a space. It relied in one or two or three other things.” The invention doesn't lie in any one thing. The seal is old, the space is old, the cap is old, each individual element is old.
Byron R. White: What space are those?
Gordon D. Schmidt: Space between the cover cap, the space between the cover cap and -- it's on the -- the infringing structure above the black line which is the cover cap. And that space of course must be -- if you're going to establish the seal but that is what --
Byron R. White: (Inaudible)
Gordon D. Schmidt: If you scroll and lay down to hit the cover cap of the container cap first, then you don't have a seal. That's quite obvious. It wasn't new, it wasn't claimed to be new. Now, the manner of the solution that's number nine as the point, number ten the fact that the Patent Office did issue the patents. There is a presumption of the validity. It is now statutorily set forth. Number 11, we have a new combination. The old -- the elements of some -- element themselves are old; that is quite permissible in law. We have the prior art to consider and the prior art does not anticipate this, all of the pertinent prior art was considered by the Patent Office except Livingston and all Livingston does is -- is cumulative of a particular type of seal and we do not invent a new seal. We've got to consider number 13, the utility of the device. It does have utility. 100 complaints sought of some 15,000,000. It was not perfect but it was nearly perfect. The law requires much less. Number 14, we have acceptance. The product has been accepted not only by the public but it has been accepted by our adversaries in the fact that they copied. Number 14, it has been recognized.
Byron R. White: Both claims are (Inaudible).
Gordon D. Schmidt: Both claim, there are two claims.
Byron R. White: (Inaudible)
Gordon D. Schmidt: In the record, I wrote it down a little while ago, Your Honor.
Byron R. White: 525
Gordon D. Schmidt: 525.
Byron R. White: 512.
Gordon D. Schmidt: 512. There are two claims 512. I've covered the acceptance of recognition. The fact that the -- invention has been directly in -- and exactly copied, the Calmar people sought the same inventions, same protection. When they filed their own application, they cited Lohse in their application. They attempted to persuade the Patent Office that they could get a put -- a claim allowed, the same as our view, went above Lohse. These are all things that are here before considered by this Court as being important. Number 18 and the last is the fact that there had been successors by both parties. Our petitioners have said initially that the only reason that this patent was held valid was because of the tremendous success. That is not true. I have listed 17 other reasons before I ever came to the question of whether or not it was successful. And then in the reply brief, they apparently realized that they had build up commercial success too much whereas commercial success became important to show utility and they now call it a commercial innovation. I don't know why the change but to me, a commercial innovation is synonymous with commercial novelty. So if they are now saying and admitting that we have something novel then the only question that remains for this Court to determine is whether or not the Eighth Circuit was incorrect in implying the high standards of this Court. And determining that there were factors, 18 factors or at long last finding one valid.
Hugo L. Black: May I ask you this question that disturbed me a little. You -- you gave 18 guideposts which maybe all relevant. But does that not indicate to some extent that it's impossible to capture one single formula in the short series of words that will allow us to say, “This is it?” Isn't it something like negligence?
Gordon D. Schmidt: I -- I agree with Your Honor in saying that you cannot define obviousness or non-obviousness by one word, yes. So what -- what must we do? We must look to see whether or not there are 18 points or five points, or two points, or none. If there are none and there is a doubt, certainly then it becomes a problem on the part of the patentee to try to sustain his patent. But I'm not saying that the absence of all of these 18 points would mean that there would automatically be no -- no invention, I'm not saying that at all. I'm merely saying that when the question is close, the lower courts would like to see this Court set down the boundary so that they can understand. And I'm sure they want to follow the AMP case. The Cuno occasion say that we have a high standard of invention. They want to follow that. But what they say whenever the AMP case is cited, they said, “Oh well, that's fine that was an easy one”. Obviously, that was unpatentable. Anybody would say that. That's what's happened over and over again. But the Eighth Circuit doesn't say that.
Hugo L. Black: Isn't just about a -- isn't it a matter of judgment after all on what you've said considering all of these and maybe 18 more or 36 more factors --
Gordon D. Schmidt: If I will --
Hugo L. Black: -- whether it actually reaches the standard which is practically impossible of definition.
Gordon D. Schmidt: It is impossible of definition except that we do have these guidelines. We need this guideline. If we cast them aside and say they are of no value then we are hopelessly lost. And the various circuits throughout the land except for the Eighth Circuit, if there has been a getting away from the high standards, it has been because of the fact that rest of the circuits in our opinion have not followed what the Eighth Circuit says, “When we apply 103, will you follow the high standards of this Court?” And they've done so for 35 years. And this is a perfect example, not because it's simply a complex. Some of the most complex devices can be the most unpatentable. Anybody can put -- anybody could solve this problem or something complex in ex -- in expensive. But it takes -- it takes a genius to do it in such a way that it is marketable. That it is inexpensive, that it'll do the job. The simplicity has no bearing. This is not a -- an atomic bomb. This is not going to help us get to the moon but it is important that we set down the guidelines so that the courts will understand. And that the Eighth Circuit be used as an example of how to solve this problem of what it is in -- a patentable invention and what is not.
Earl Warren: Mr. Lyons.
Dennis G. Lyons: May it please the Court. Just a few words in rebuttal. There appears to be a little confusion as to what the record shows as to the use of the Lohse patent. The testimony as to the practice under the Lohse patent back in the late 1930's appears at the record at approximately at page 287 and 288. And there the witness who was associated with the company that practiced the Lohse patent clearly testified that it inhibited the leakage, that it was capable of an automatic assembly. In other words, if you could put the over-cap and the sprayer and the container cap together and then put them into a bottle which was exactly what Mr. Scoggin did. Now, Mr. Scoggin's testimony was that when he tried the Lohse technique, there was leakage. Now, perhaps Mr. Scoggin had some sort of problem that his device helped him to solve but the fact of the matter is that the Lohse according to the undisputed testimony of what happened back in the late 30s was an effective commercial device.
William J. Brennan, Jr.: Well, what are you going to do to the then about the findings of fact at page 26 of the record that there's not finding of the trial court?
Dennis G. Lyons: Well, Your Honor, to the extent that there is a fact finding involved in that I would think it's clearly erroneous to some of the basis of this record.
William J. Brennan, Jr.: Well its --
Dennis G. Lyons: There's no --
William J. Brennan, Jr.: -- it's rather flat isn't it that the Lohse's cap would not solve the problem it was faced by the manufactures and sellers of insecticide. And then -- including sentence to the next paragraph, this form of contact between the end of the hold down cap from the top of the container would not solve the problem of leakage. You say there's support in the record for that?
Dennis G. Lyons: There's no support in the record as to Lohse's device. The record is unambiguous of Lohse's device was a big proof back in 1938.
Speaker: (Inaudible)
Dennis G. Lyons: That Lohse's device was practiced by -- his -- assignee was leak proof.
William J. Brennan, Jr.: And would you give me those records?
Dennis G. Lyons: That starts around 287 for the first time. In any event the further contention is of course that simply using the seal taught by Livingston and taught by Mellon which is all that Scoggin did was not invention. The prior teachings of this Court in the AMP case in the Marconi Wireless case of this case where the patent issued to the great Marconi was held invalid for warrant of invention, all indicate that the dominant concern is the prior art. Because it is the prior art that people are to be free to draw from to find solutions to their problems. It is not 1/18th of the question. It is the dominant question as this Court's decisions teach.
Byron R. White: Mr. Lyons, it that doesn't favor to your case whether Lohse solved the leak problem or not?
Dennis G. Lyons: Certainly not.