View source for Talk:Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc., 546 F.2d 530 (1976)


== Maura ==
At issue in this case is the validity of a United States patent1 that pertains to a weight-lifting apparatus. Originally granted to Harold Zinkin, the patent was owned by Universal Athletic Sales Co. at the time of suit. The patent consists of eight claims, and the district court struck down two of them on
grounds of anticipation and obviousness.2 We must decide whether these rulings were warranted.

For the district court to have granted controlling weight to the testimony of Mr. Lyle constituted error for two reasons. First, because Mr. Lyle's qualifications as an expert are questionable, at least insofar as this litigation is concerned, the trial judge erred in according great weight to his opinions. Second, the district court committed error in failing to discount the value of the testimony, given the interest in the litigation of the law firm with which Mr. Lyle was associated.
A.
Universal first contends that Mr. Lyle's testimony should have been excluded on the ground that he was not an expert with respect to the patent claims at issue here.
This Court previously has delineated the standard which governs the competency of an expert witness in a particular case. As we noted in United
States v. 60.14 Acres of Land,12 an expert witness " 'must have such skill, knowledge and experience in (the) field or calling as to make it appear that
his opinion or inference will probably aid the trier in his search for truth.' "13 Ordinarily, the determination of competency of an expert witness rests
within the discretion of the trial court.14 The Supreme Court has posited that "the trial judge has broad discretion in the matter of the admission or
exclusion of expert evidence, and his action is to be sustained unless manifestly erroneous."15 It follows that this Court will not interfere with the decision of the district judge as to an expert, absent an abuse of discretion.

In considering whether the trial judge should have recognized Mr. Lyle as an expert in this litigation, we must first determine which art is the pertinent one. Universal asserts that the relevant art is weight-training, whereas the defendants and the district court selected mechanical engineering. We doubt whether any mechanical engineer could provide meaningful opinions regarding the devices at issue here. For an engineer to assist the trial judge in his search for truth would require that he have at least some familiarity with body-building machines. At the same time, a mere weight lifter probably would be of marginal assistance to a court in evaluating the design facets of exercise apparatus. Consequently, the art germane to the present case is the design of body-training devices.

As a result, it is doubtful whether he was suited to serve as an expert here.

Simply stated, a patent may be deemed invalid if it is "obvious." 35 U.S.C. § 103 provides, in part: "A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that 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 the subject matter pertains."
As observed in Trio Process Corporation v. L. Goldstein's Sons, Inc.,33 the most authoritative construction of section 103 appears in Graham v. John Deere Co.34 There the Supreme Court established three mandatory criteria with which to frame judicial determinations as to obviousness: "The scope
and content of the prior art . . .; differences between prior art and the claims at issue . . .; and the level of ordinary skill in the pertinent art . . . ."35 The Supreme Court also set forth several permissive, or "secondary," considerations: "commercial success, long felt but unsolved 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."36

With respect to the third mandatory criteria under Graham, that is, the level of ordinary skill in the pertinent art, the district court acknowledged that "The record on this point is somewhat deficient."40 Even so, the trial judge declared that "any competent mechanical engineer . . . could readily create a
machine substantially the same as that of plaintiffs."41 As discussed above, we believe that the pertinent art is neither mechanical engineering nor weight-lifting, but rather the design of body-exercising apparatus. Not only did the district court fail to select the proper art, but it is questionable whether the evidence submitted by the defendants speaks to the level of ordinary skill in the design of weight-lifting devices.

This Court need not consider the permissive, or secondary, criteria mandated in Graham for determinations of obviousness. For we are convinced that the defendants failed to provide adequate evidence to justify invalidation of the Zinkin claims under section 103. Even if the permissive tests were
applied, the commercial success of the Zinkin machine42 would reinforce our conclusion, as would the "failure of others" to eliminate the safety hazards and manpower requirements of the traditional chest press exercise.43 Thus, we cannot say that the Zinkin claims are so obvious as to render them invalid.44
B.

Besides holding the Zinkin claims void for obviousness, the district court concluded that they were anticipated by prior art. 35 U.S.C. § 102 provides, in pertinent part: "A person shall be entitled to a patent unless (a) the invention was . . . patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent. . . ." The defendants had contended, and the trial judge agreed, that both the Simmons patent and the Loprinzi photograph anticipated the Zinkin claims so as to render them nugatory under the statute. Since there is insufficient evidence to rebut the heavy presumption of patent validity, we do not sustain this conclusion of the district court.
In construing section 102, the trial judge apparently viewed the Loprinzi photograph as a "printed publication" which described the Zinkin invention. While neither this Court nor apparently any other tribunal has yet determined whether a photograph in itself constitutes a "printed publication," we
believe that a photograph may so qualify for purposes of section 102.45 In so stating, we reaffirm our pragmatic pronouncement in Philips Electronic and Pharmaceutical Industries Corp. v. Thermal and Electronics Industries, Inc.,46 that "to restrict our interpretation of Section 102(a)'s 'printed' publication
requirement solely to the traditional printing press would ignore the realities of the scientific and technological period in which we live . . . ."47 With a photograph, one conversant in a pertinent art could make or construct a purported invention without resorting either to the patent or to his own inventive skills. Under certain circumstances, then, a photograph may so anticipate a patent as to render it invalid.
The question remains, however, whether the photograph of Loprinzi's device anticipated those claims of the Zinkin patent that the defendants challenge. We hold that it does not. In Philips we specified the circumstances under which a prior publication could anticipate a patent: "For a prior publication to be sufficient to defeat a patent it must exhibit a substantial representation of the invention in such full, clear, and exact terms that one
skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own inventive skills."48
In the discussion of obviousness in Part III-A, we commented that it would be difficult, if not impossible, to discern the content of the Loprinzi photograph. That observation is applicable here, for it would not be possible for a trial court to ascertain whether the photograph anticipates the Zinkin invention. The photographic representation of the Loprinzi "super-duper pressing apparatus" hardly is "full, clear, and exact." It is questionable whether one skilled in the design of weight-lifting apparatus could produce the Zinkin device, based on an examination of the Loprinzi photograph. Accordingly, we believe that the magazine photograph is insufficient to render the patent invalid on the ground of anticipation.
Nor can we hold that the Simmons patent anticipated the Zinkin weight-lifting machine. It is unclear whether the Simmons invention encompasses all or substantially all of the elements of the apparatus under scrutiny in this case. The evidence submitted does not reveal whether one skilled in the design of body-exercising devices, or even in mechanical engineering, could develop the Zinkin weight-lifting apparatus based on the Simmons patent or on his own skills. We conclude, therefore, that the defendants in the present case have failed to demonstrate invalidity of the challenged claims under section 102.
IV.
While the validity of the Zinkin patent is not completely free from doubt, we do not accept the decision reached by the district court. The district court erred in according substantial weight to the testimony of Mr. Lyle. Without such unjustified reliance on that testimony, the trial judge could not properly interpret the prior art. Because the evidence produced by the defendants simply is not sufficient to rebut the presumption of validity accorded patents, we must reverse the rulings of the district court as to obviousness and anticipation, and sustain claims numbered 3 and 4 of the Zinkin patent.
The judgment of the district court will be vacated and the cause remanded for proceedings consistent with this opinion.