Anderson's Black Rock, Inc. v. Pavement Co. SKH

Notes

Supreme Court of the United States

• District Ct says patent invalid, no infringement
• Court of Appeals says no, it is valid, infringement
• Supreme Ct says actually, no, it really is INVALID, no infringement

Petitioner: Anderson's Black Rock

Pavement Salvage says Anderson infringed on its patent

• The District Court rejected respondent's claim of infringement, finding the patent invalid. The Court of Appeals, by a divided vote, reversed. Supreme Court reverse the judgment if the Court of Appeals.

• The placement of a radiant-heat burner upon the side of a standard bituminous paver is the central feature of respondent's patent.

• The burner, by itself, was not patentable. So, does the combination of old elements create a valid patent?
  • The combination was reasonably obvious to one with ordinary skill in the art.

• The combination was argued to fill a long-felt want and commercial success, but that "without invention will not make patentability."

• The combination of old elements performed a useful function, but it added nothing to the nature and quality of the radiant-heat burner already patented. Was not a patent due to the "non-obvious" standard.

Topic in question: Means for Treating Bituminous Pavement"

• solve cold joint problem in laying layers of asphalt
• radiant-heat burner for exposed layer, spreader for new layer, tamper for even surface.

Prior Art

• could shape and spread only
  • Anderson's just put a radiant-heat burner on one of those
  • Pavement Salvage calls infringement
• radiant-heat burner patented in 1905
  • burner itself not patentable
  • patent sought for placing burner on side of paver
    • serves new purpose of PREVENTING COLD JOINT, rather than patching as it had been used

US SC says INVALID patent, no infringement

• each element known in prior art
• so can combo of old elements warrant patent in this case?

Arguments for INVALID:

• not here - just took 4 old things and put them on one chassis
• no new or different function
• good for commercialism, not invention
• not greater than sum of individual effects
• commercial success and filling want don't make patentability WITHOUT INVENTION - need invention!

Bottom line:

• while the combination of old elements performed a useful function,[4] it added nothing to the nature and quality of the radiant-heat burner already patented.
• those skilled in the art the use of the old elements in combination was not an invention by the obvious-nonobvious standard
• Need more than just success - need invention