Robert Sarkisian v. Winn-Proof Corp., William A. Werner, and Wer-Nel Enterprises, Inc., Defendants

686 F.2d 671 213 U.S.P.Q. 912 Robert SARKISIAN, Plaintiff-Appellee, v. WINN-PROOF CORP., William A. Werner, and Wer-Nel Enterprises, Inc., Defendants- Appellants. No. 78-3270. United States Court of Appeals, Ninth Circuit. Argued and Submitted Sept. 3, 1980. Decided Nov. 27, 1981. Grant L. Hubbard, Knobbe, Martens, Olson, Hubbard & Bear, Santa Ana, Cal., argued, for defendants-appellants; John W. Stuart, Kolisch, Hartwell, Dickinson & Stuart, Portland, Or., on brief. John A. Artz, Harness, Dickey & Pierce, Birmingham, Mich., for plaintiff-appellee. Appeal from the United States District Court for the District of Oregon. Before ALARCON and CANBY, Circuit Judges and HOFFMAN * , District Judge. ALARCON, Circuit Judge: 1 Appellants Winn-Proof Corporation, William Werner, and Wer-Nel Enterprises, Inc. appeal from a judgment of the district court finding claims 3-5 of United States Letters Patents No. 3,646,696 ['the '696 patent'] valid and infringed. Appellee Robert Sarkisian cross-appeals from the court's judgment finding United States Letter Patent No. 3,662,482 ['the '482 patent'] invalid for double patenting. For the reasons stated below, we affirm the judgment of…

concurring in part and dissenting in part.

I concur in the judgment and in all of Judge Alarcon’s thorough opinion except its treatment of the requirement of “syner *690 gism”. I have no difficulty joining the majority in rejecting any implied suggestion that (1) validity of a combination patent depends in any literal sense upon the combination’s amounting to more than the sum of its parts, and (2) obviousness is to be judged with the benefit of hindsight, in light not only of the prior art but also of the disputed innovation itself. In rejecting these propositions, however, I would not reject the concept of “synergism” as well, because I do not understand our prior decisions to have equated the synergism requirement with the rejected propositions. In Penn International Industries v. Pennington Corp., 588 F.2d 1078 (9th Cir. 1978), for example, this court required a combination patent to be “synergistic”, which it equated with the well-recognized requirement that the combination produce “ ‘an unusual or surprising result’ ”. Id. at 1081 . In so ruling, the court clearly viewed its requirement of synergism as a proper formulation of the nonobviousness standard of § 103, as that…

Appellants Winn-Proof Corporation, William Werner, and Wer-Nel Enterprises, Inc. appeal from a judgment of the district court finding claims 3-5 of United States Letters Patents No. 3,646,696 [“the ’696 patent”] valid and infringed. Appellee Robert Sarkisian cross-appeals from the court’s judgment finding United States Letter Patent No. 3,662,482 [“the ’482 patent”] invalid for double patenting. For the reasons stated below, we affirm the judgment of validity and infringement but reverse the finding as to double patenting.

The invention involved in this case is a portable sign stand of the sort commonly found at roadside construction sites and gasoline stations, used to display gasoline prices and other roadside warning messages. Despite the fact that the sign stand is light and portable, with a virtually weightless base, the sign stand can withstand wind conditions of up to 80 miles per hour without “walking” or tipping over.

It is the unique interaction among the elements of the sign stand which enable it to combine the features of lightness and stability. The lightweight base of the stand is made up of tubular members or legs, arranged in either a parallel relationship or in…