Respondent, which holds patents for plastic cable ties, sued
petitioner in Federal District Court for infringement, and
petitioner defended on the ground that the patents were invalid for
obviousness. After examining the prior art, identifying the
differences between it and the patents at issue, and ultimately
concluding that all of the improvements made by the patents over
the prior art would have been obvious to one skilled in that art,
the court held that respondent's patents were invalid for
obviousness. The Court of Appeals reversed, disagreeing with the
District Court's assessment of the prior art and ruling that the
references cited by the District Court did not teach the
innovations introduced by respondent. Petitioner contends that the
Court of Appeals improperly ignored Federal Rule of Civil Procedure
52(a) in substituting its view of factual issues for that of the
District Court.
Held: Regardless of whether the ultimate question of
obviousness is one of fact subject to the clearly erroneous
standard of Rule 52(a), the District Court's subsidiary
determinations, at the least, are subject to the Rule. The Court of
Appeals, however, did not mention the Rule, did not explicitly
apply the clearly erroneous standard to any of the District Court's
findings on obviousness, and did not explain why, if it was of that
view, the Rule had no applicability to the issue of obviousness. In
the absence of an opinion clearly setting forth the Court of
Appeals' views on such matters, plenary consideration will not be
given here to petitioner's claim that the decision below cannot be
squared with the Rule. Instead, the Court of Appeals' judgment is
vacated, and the case is remanded to that court for further
consideration in light of the Rule.
Certiorari granted; 774 F.2d 1082, vacated and remanded.
PER CURIAM.
Respondent holds three patents for plastic cable ties, products
that are commercially successful. Petitioner copied respondent's
products, was sued for patent infringement in the Northern District
of Illinois, and defended on the ground that the patents were
invalid for obviousness. The trial
Page 475 U. S. 810
judge examined the prior art, identified the differences between
the prior art and each of the three patents at issue, and concluded
that all of the improvements made by the three patents over the
prior art would have been obvious to one skilled in that art. In
the course of arriving at this conclusion, the trial judge
recognized that the presumption of patent validity must be overcome
by clear and convincing evidence, that the patents' commercial
success and the failure of competitors to develop equally
successful inventions were important factors weighing in favor of
the validity of the patents, and that, in addressing the question
of obviousness, a judge must not pick and choose isolated elements
from the prior art and combine them so as to yield the invention in
question if such a combination would not have been obvious at the
time of the invention. Nonetheless, the judge found that
respondent's patents were invalid for obviousness.
The Court of Appeals for the Federal Circuit reversed. 774 F.2d
1082 (1985). The court disagreed with the District Court's
assessment of the prior art, ruled that the references cited by the
District Court did not teach the innovations introduced by
respondent, and referred to other errors made by the District
Court.
Petitioner contends that the Federal Circuit ignored Federal
Rule of Civil Procedure 52(a) in substituting its view of factual
issues for that of the District Court. In particular, petitioner
complains of the rejection of the District Court's determination of
what the prior art revealed and its findings that the differences
identified between respondent's patents and the prior art were
obvious.
Petitioner's claims are not insubstantial. As this Court
observed in
Graham v. John Deere Co., 383 U. S.
1,
383 U. S. 17-18
(1966):
"While the ultimate question of patent validity is one of law, .
. . the § 103 condition [that is, nonobviousness] . . . lends
itself to several basic factual inquiries. Under § 103, the
scope and content of the prior art are to be
Page 475 U. S. 811
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness or
nonobviousness of the subject matter is determined. Such secondary
considerations as commercial success, long-felt but unresolved
needs, failure of others, etc., might be utilized to give light to
the circumstances surrounding the origin of the subject matter
sought to be patented. As indicia of obviousness or nonobviousness,
these inquiries may have relevancy."
This description of the obviousness inquiry makes it clear that
whether or not the ultimate question of obviousness is a question
of fact subject to Rule 52(a), the subsidiary determinations of the
District Court, at the least, ought to be subject to the Rule.
The Federal Circuit, however, did not mention Rule 52(a), did
not explicitly apply the clearly erroneous standard to any of the
District Court's findings on obviousness, and did not explain why,
if it was of that view, Rule 52(a) had no applicability to this
issue. We therefore lack an adequate explanation of the basis for
the Court of Appeals' judgment: most importantly, we lack the
benefit of the Federal Circuit's informed opinion on the complex
issue of the degree to which the obviousness determination is one
of fact. In the absence of an opinion clearly setting forth the
views of the Court of Appeals on these matters, we are not prepared
to give plenary consideration to petitioner's claim that the
decision below cannot be squared with Rule 52(a). Instead, we grant
the petition for certiorari, vacate the judgment, and remand the
case to the Court of Appeals for further consideration in light of
Rule 52(a).
It is so ordered.
JUSTICE MARSHALL dissents from this summary disposition, which
has been ordered without affording the parties
Page 475 U. S. 812
prior notice or an opportunity to file briefs on the merits.
See Cuyahoga Valley R. Co. v. United Transportation Union,
474 U. S. 3,
474 U. S. 8 (1985)
(MARSHALL, J., dissenting);
Maggio v. Fulford,
462 U. S. 111,
462 U. S.
120-121 (1983) (MARSHALL, J., dissenting).
