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POSNER, Circuit Judge, with whom ESCHBACH, Circuit Judge,
joins, concurring and dissenting.
I agree that the judgment for Roberts cannot stand and I also
agree that the method by which questions of fact pertaining to
the validity of Roberts' patent were put to the jury was incorrect.
But I think the patent is obvious as a matter of law and therefore
that the case should not be remanded for a new trial but ended
now with an order to dismiss the complaint.
A socket wrench has two parts (see Figure 1 [infra]): the shaft
which the person using the wrench grasps and turns (labeled "10"
in Figure 1), and a detachable socket (16) which grips the bolt
that the wrench is turning. Usually the wrench comes with a number
of sockets of different size so that a single wrench can be used
to turn bolts of different width.
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The principle of the socket wrench is not new. The alleged novelty
of the Roberts patent is in the mechanism, shown in Figure 2 [infra],
for releasing the socket when the user of the wrench wants to
change sockets. The knob (22) at the top is the pushbutton (also
22) on the back of the head of the wrench in Figure 1. Notice
that the pushbutton is not depressed. In this, the locked position,
the pin (20) to which the pushbutton is attached is pressing a
little ball (18) against, and partially through, a ring in the
wall of the mechanism. (The ball cannot fall out, because its
diameter is greater than the ring's.) The part of the ball that
protrudes outside the ring (24) is lying in a depression in the
inner wall of the socket (not shown in Figure 2), thereby holding
the socket onto the wrench. If you press the pushbutton, this
will force the pin down until the hollow space in it (26) is next
to the ball, and the weight of the socket will then force the
ball into that space. There will now be nothing holding the socket
to the wrench, and the socket will fall of its own weight.
This is the Roberts quick-release mechanism. It was a huge commercial
success -- though this may have owed a lot to Sears' promotion
and marketing of it -- because it enabled changing sockets with
one hand. By holding the wrench face downward and pushing the
pushbutton with your thumb you can drop off the socket attached
to the wrench; by keeping the button pressed down you can insert
the wrench into a different socket simply by pressing the head
of the wrench down onto that socket; and you can then lock the
socket to the wrench simply by releasing your thumb.
Successful though it has been, the Roberts patent is invalid if "the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. @ 103. The word "obvious" in the statute is not obvious. Its legal meaning must be derived from the policies that inform the patent statute. The purpose of allowing people to obtain patents is strictly utilitarian -- to create incentives to invent useful things. "The patent monopoly was not designed to secure to the inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to bring forth new knowledge." Graham v. John Deere Co., 383 U.S. 1, 9, 15 L. Ed. 2d 545, 86 S. Ct. 684 (1966). Since new knowledge is a social good, it might seem that no limits should be placed on the scope or duration of patent protection. The problem is that patent protection has a dark side, to which the term "patent monopoly" is a clue. A patent enables its owner to monopolize the production of the things in which the patented idea is embodied. To deny that patent protection has this effect, the position that a footnote in the majority opinion attributes to the chief judge of the new patent appeals court, is -- with all due respect -- to bury one's head in the sand. A patent excludes others from using the patented invention except on the terms set by the patent owner. If the invention is a valuable one he will be able to charge a substantial royalty to manufacturers who want to use it; and by increasing the cost of manufacture the royalty may well result in higher prices to consumers and a lower output of the manufactured product than if the invention were freely available to anyone who wanted to use it. See Scherer, Industrial Market Structure and Economic Performance 442, 450 (2d ed. 1980); Stigler, The Organization of Industry 123-25 (1968).
This is not to say that no patents should be granted. An invention might not be made (not so soon, anyway) unless the inventor could get a patent; for he might not be able to recoup his investment in the invention if anyone could use it without charge, and therefore might have no incentive to make the investment in the first place. In such a case granting a patent would increase rather than decrease the output of useful things. My point is only that the costs as well as benefits of patent protection are relevant to deciding which inventions should be patentable. The balance tips against protection when the invention is the sort that was likely to be made, and as soon, even if no one could have patented it. In such a case patent protection would have no good incentive effects but would have the usual bad monopoly effects. All this is well recognized in the law. The Supreme Court in the Graham case, referring to Thomas Jefferson's views on patent policy, said it was "the underlying policy of the patent system that 'the things which are worth to the public the embarrassment of an exclusive patent,' as Jefferson put it, must outweigh the restrictive effect of the limited patent [*1346] monopoly. The inherent problem was to develop some means of weeding out those inventions which would not be disclosed or devised but for the inducement of a patent." 383 U.S. at 10-11.
The means chosen was the concept codified in the statutory term "obvious." See id. at 11-17. The term identifies the cases in which patent protection is not necessary to induce invention and would therefore visit the costs of monopoly on the consuming public with no offsetting gains. As Professor Kitch has explained, "the basic principle on which the non-obviousness test is based [is that] a patent should not be granted for an innovation unless the innovation would have been unlikely to have been developed absent the prospect of a patent . . . . The non-obviousness test makes an effort, necessarily an awkward one, to sort out those innovations that would not be developed absent a patent system." Kitch, Graham v. John Deere Co.: New Standards for Patents, 1966 Sup. Ct. Rev. 293, 301. Now it is true that if the invention, though the sort of thing that ordinarily would be expected to take much time and toil to make, was made in a flash of genius, this does not make it "obvious." That is the force of the last sentence of section 103 ("Patentability shall not be negatived by the manner in which the invention was made"), as explained in the Reviser's Note. Much time and toil may have been spent in getting to the point where the spark of genius could be struck, and in any event people should not be encouraged to do drudge work by making it a condition of obtaining patent protection. But if a court thinks an invention for which a patent is being sought would have been made as soon or almost as soon as it was made even if there were no patent laws, then it must pronounce the invention obvious and the patent invalid.
We should do that here. Roberts' quick-release mechanism is simplicity itself and as one would expect its essential elements were already well known when it was invented. A man named Wendling had already patented the use of a pin and ball to hold a socket onto a wrench; his device lacked only the pushbutton. DePew had invented a mechanism for lifting heavy loads that worked like a socket wrench, with the load corresponding to the socket. A pin protruded from the top of the mechanism much like Roberts' pushbutton and was moved up and down to release the old load and lock on a new one to the lifting mechanism. Gonzalez and Carpenter separately had patented socket wrenches that had the essential elements of the Roberts patent, although the emphasis was on the locking rather than the release function. Wilson had submitted a patent application for a quick-release socket wrench almost identical to Roberts', though the application was abandoned and was not known to Roberts when he submitted his application.
The earlier patents and Wilson's application show that the basic ideas embodied in Roberts' patent were familiar ones. The idea that a socket could be locked to a wrench with a pin and ball device and that a pushbutton could be used to make the pin release one socket and lock in another was not new. The new thing was a device in which these ideas worked smoothly enough to allow sockets to be changed easily with one hand. That was Roberts' contribution, but it was entitled to patent protection only if it was unlikely to be induced except by the promise of a monopoly; and it was not. Everyone knew that there was a market for a quick-release wrench and everyone knew the elements of such a wrench -- the pin and ball for holding the socket in place and the pushbutton for releasing the old socket and locking in the new. It was a question of coming up with a workable embodiment of these ideas, a task for which no special training, expensive equipment, or prolonged testing and refining were necessary. Nor is it the case that anyone except Roberts would have needed all these things but that Roberts was a genius and could make the invention without the investments in human or physical capital that others would have had to make. In the circumstances disclosed by this record, the probable effect of patent protection is to overcompensate the inventor, thereby drawing excessive resources into the making of minor improvements and imposing unnecessary costs of monopoly on the community.
I know that many lawyers and judges find the language of economics repulsive. Yet the policies that have given shape to the patent statute are quintessentially economic, and the language of economics is therefore the natural language in which to articulate the test for obviousness.