## Facts

- Dennis G. Moore and George R. Moore, along with Sierra Products, Inc. (as owner/exclusive licensee), held a patent directed to a submersible boat-trailer light designed to function after immersion.
- Wesbar Corporation, a competitor in the boat-trailer lighting market, planned and developed a competing submersible trailer light.
- The patent owners sued Wesbar and its CEO, Bernard R. Weber, alleging infringement by Wesbar’s submersible light product.
- Wesbar defended on invalidity, contending the claimed light was obvious in view of prior art involving sealed/submersible lighting assemblies and waterproof housings.
- After a trial in the Northern District of Illinois, the district court found the patent invalid under 35 U.S.C. § 103 and entered judgment for Wesbar and Weber.
- The patent owners appealed, challenging both the obviousness determination and the standard of appellate review.

## Issues

1. Whether the asserted patent claims were invalid as obvious under 35 U.S.C. § 103 in light of the prior art.
2. Whether the court of appeals must treat the district court’s ultimate obviousness determination as a finding reviewable only for clear error, or instead independently review the legal conclusion while deferring to subsidiary factual findings.

## Decision

- The Seventh Circuit affirmed the judgment that the patent was invalid for obviousness, eliminating infringement liability.
- The court held that obviousness is an ultimate question of law derived from subsidiary factual findings under the *Graham* framework.
- The court reviewed underlying factual determinations for clear error, but independently reviewed the ultimate legal conclusion of obviousness.
- Applying the *Graham* factors, the court agreed that the claimed invention was largely a combination of known elements in the prior art performing their expected functions, and that secondary considerations did not overcome the technical showing of obviousness.

## Legal Principles

- Obviousness under 35 U.S.C. § 103 is a legal conclusion based on subsidiary factual inquiries, including: (1) scope and content of the prior art, (2) differences between the prior art and the claims, (3) level of ordinary skill in the art, and (4) secondary considerations.
- On appeal, subsidiary factual findings underlying obviousness are reviewed for clear error; the ultimate determination of obviousness is reviewed independently as a question of law.
- A claimed invention that primarily combines known elements yielding predictable results is likely obvious, even where there is evidence of commercial success or alleged copying.

## Conclusion

The Seventh Circuit affirmed invalidity for obviousness, concluding the claimed submersible trailer-light design was an expected combination of known waterproofing and lighting features, and it clarified that appellate courts defer to fact findings but independently assess the ultimate legal conclusion of obviousness.


Moore v. Wesbar Corp., 701 F.2d 1247 (7th Cir. 1983)