Anderson's Black Rock, Inc. v. Pavement Co. (JWB)

The Case

• Pavement Co (respondent) brought action against Anderson (petitioner) for infringement of patent covering “means for treating bituminous pavement”
• Black tops must be laid in strips, allowing the first strip to cool before laying down the adjacent strip (which forms a loose bond, which allows for cracks, etc)
• Respondent’s patent sought to solve problems of cold joint by combining a radiant-heat burner, a spreader of the bituminous material against the strip, and a tamper/screed for shaping the newly placed material
• Heater has always been used laying asphalt as far back as 1905
• Respondent claims that its patent involves a combination of prior art which produces the new and useful result of eliminating the cold joint
• District Court rejected respondent’s claim of infringement because patent was invalid
  • The District Court said: ‘All that plaintiff (respondent) has done is to construct four elements known in the prior art on one chassis.’ That is relevant to commercial success, not to invention.
  • The combination of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a ‘new or different function’
• Court of Appeals reversed (by divided vote)
• Supreme Court reversed Court of Appeals

“We conclude that while the combination of old elements performed a usefulfunction,[4] it added nothing to the nature and quality of the radiant-heat burner already patented. We conclude further that to those skilled in the art the use of the old elements in combination was not an invention by the obvious-nonobvious standard. Use of the radiant-heat burner in this important field marked a successful venture. But as noted, more than that is needed for invention.”