Winner Int'l v. Ching-Rong Wang, CHING-RONG

Citation53 USPQ2d 1580,202 F.3d 1340
Decision Date27 January 2000
Docket NumberCHING-RONG
Parties(Fed. Cir. 2000) WINNER INTERNATIONAL ROYALTY CORPORATION, Plaintiff-Appellee, v.WANG, Defendant-Appellant. 98-1553 DECIDED:
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Kenneth A. Lapatine, Camhy Karlinsky & Stein, of New York, New York, argued for plaintiff-appellee. Of counsel on the brief was Charles L. Gholz, Oblon, Spivak, McClelland, Maier & Neustadt, P.C.

Joseph A. Yanny, Yanny, Grieco & Osher, of Los Angeles, California, argued for defendant-appellant. With him on the brief were Mary L. Grieco, and Michael A. DiNardo. Of counsel on the brief were Charles R. Wolfe, Jr., and Richard E. Fitcher, Bacon & Thomas, of Alexandria, Virginia.

Before MICHEL, RADER, and GAJARSA, Circuit Judges.

MICHEL, Circuit Judge.

Ching-Rong Wang ("Wang") appeals from the judgment of the United States District Court for the District of Columbia, overturning the decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences (the "Board") in an interference, and holding that the inventions of claims 2 and 4 of U.S. Patent No. 4,935,047 ("the '047 patent") and claims 9-11 of U.S. Patent App. No. 07/478,411 ("the '411 application") would not have been obvious in light of the cited prior art. See Winner Int'l Royalty Corp. v. Wang, 11 F. Supp. 2d 18, 48 USPQ2d 1139 (D.D.C. June 12, 1998). The '047 patent, issued to Jinn Wu ("Wu"), and the '411 application are owned by Winner International Royalty Corp. ("Winner"). The district court had jurisdiction pursuant to 35 U.S.C. § 146 (1994) because Wu filed suit there after an adverse ruling by the Board in an interference between himself and Wang. Winner, as owner of Wu's patent, superseded Wu as plaintiff. The Board held the Wu patent and application claims invalid as obvious. See 35 U.S.C. § 103 (1994). Other litigation (including suit against Wang), in which Winner alleges infringement of its '047 patent and asserts several related claims, has been stayed in the Central District of California pending the outcome of this appeal. The district court first denied Wang's motion to transfer this action to the District Court for the Central District of California. See Winner Int'l Royalty Corp. v. Wang, 45 USPQ2d 1864 (D.D.C. Jan. 20, 1998). Then it conducted a 7 day bench trial. On appeal, Wang challenges (1) the denial of the transfer; (2) rulings as to the admission of evidence despite its similarity to that before the Board; and (3) the holding of non-obviousness that revived the '047 patent. This case was submitted for our decision following oral argument on August 2, 1999. Because the district court did not clearly err in any of its factual findings relating to obviousness, did not err in its ultimate determination of non-obviousness, and did not abuse its discretion either in admitting the challenged documentary evidence and testimony or in refusing to transfer the case, we affirm.

BACKGROUND

In addition to the '047 patent, Winner also owns U.S. Patent No. 4,738,127 ("Johnson"), the commercial embodiment of which is the original steering wheel anti-theft device known as "The Club." Wu, the principal in the Taiwanese manufacturer of the original Club, is named as the inventor in the '047 patent, commercial embodiments of which are known as "The Super Club," "The Ultra Club," and "The Club GL." The '047 patent discloses an automobile anti-theft device that is mounted across the steering wheel and is locked in place by use of a self-locking ratcheting mechanism. Like all versions of the Club, when locked in place, the commercial embodiments of the '047 patent prevent theft by blocking the steering wheel from turning. The ratcheting mechanism is different from the dead-bolt used in Johnson and so the '047 patent may be thought of as an improvement over Johnson. While Johnson's dead-bolt system is more secure, it is not as convenient as the ratcheting mechanism claimed in the '047 patent because a key is required to lock the Johnson device in place while the '047 patent discloses a device that locks itself without use of a key.1

Wang also manufactures similar anti-theft devices in Taiwan and exports them to the U.S. where he sells them through his United States distributor. Wang's device is known commercially as "The Gorilla Grip." Wang filed a patent application directed to his Gorilla Grip device and was issued U.S. Patent No. 4,887,443 ("the '443 patent").

In 1990, Wu discovered that the device disclosed in Wang's '443 patent was very similar to the subject matter of his then-pending application, which later issued as the '047 patent, and decided to provoke an interference by filing a divisional application and submitting a claim identical to the broadest claim in the '443 patent. On August 8, 1991, an interference was declared, and a proceeding began to determine which party, Wu or Wang, had priority of invention. The claims of the '047 patent and an additional Wu application, the '411 application, were eventually added to the count in the interference.

During the interference proceeding, Wang filed a preliminary motion alleging that the interference count, and hence both parties' claims, was unpatentable as obvious in light of certain prior art under 35 U.S.C. § 103 (1994). Wang, apparently acknowledging that his claim to priority over Wu's '047 patent was questionable, ultimately conceded that his '443 patent was invalid and sought to prove that Wu's '047 patent was also invalid.

After a final hearing, the Board, in a split decision, held all affected claims invalid except for claims 1 and 3 of the '047 patent. Wu then filed both an appeal to this court pursuant to 35 U.S.C. § 141 (1994) and an action in the District Court for the District of Columbia pursuant to 35 U.S.C. § 146, while Wang filed a section 146 action in the District Court for the Central District of California. In Wu's section 141 appeal from the decision of the Board, this court determined that the section 146 suit would proceed pursuant to Wu's complaint in the District Court for the District of Columbia. See Wu v. Wang, 129 F.3d 1237, 44 USPQ2d 1641 (Fed. Cir. 1997). Because Wu filed his appeal first, and responded in timely fashion to Wang's notice of election by filing a section 146 action in the District Court for the District of Columbia, Wu's choice of forum governed. See id. at 1242-43, 44 USPQ2d at 1645-46. We then dismissed the section 141 appeal as superseded by the section 146 action. See id. at 1238, 44 USPQ2d at 1642.

After the first appeal to this court, Wang filed a motion in the district court to transfer the action to the Central District of California. The district court denied the motion. See Winner, 45 USPQ2d 1864. After a seven-day bench trial, the district court held that the inventions of claims 2 and 4 of the '047 patent would not have been obvious in light of the cited prior art. See Winner, 11 F. Supp. 2d 18, 48 USPQ2d 1139.2 At trial, Winner presented testimony on each of the four principal factual issues underlying an obviousness determination, as well as affidavits. Wang presented one expert witness to testify as to his opinion regarding obviousness and the underlying factual determinations. The record before the Board was also admitted into evidence before the district court.

The focus of the trial was on four prior art references that Wang alleged, before the court as he had before the Board, rendered the invention of the '047 patent obvious. These references were Johnson (mentioned above), U.S. Patent No. 3,462,982 ("Moore"), Taiwan Patent App. No. 74,210,699 ("WuROC"), and French Patent App. No. 2,566,398 ("Grimaldi"). Winner also introduced evidence of the commercial success of its Super Club line of products. This evidence had not been presented to the Board.

Like the device disclosed in the '047 patent, the mechanism of Johnson immobilizes the steering wheel by the user inserting it within the steering wheel, telescoping its arms outward so that hooks on the end of the arms engage the steering wheel, and then locking the arms in place. As stated earlier, unlike the '047 patent, which discloses a self-locking ratcheting mechanism, Johnson uses a dead-bolt to lock the device in place, which requires the user to turn a key after putting the device on the wheel. Moore discloses a steering wheel lock that unfolds into a "Y" shape and utilizes a self-locking ratcheting mechanism, which does not require a key. WuROC discloses a wheel and brake pedal locking device with a versatile locking core that can accommodate either a dead-bolt or a self-locking ratcheting mechanism, but it does not disclose either of these locking mechanisms. Grimaldi discloses a two-piece mechanism for locking a clutch or brake pedal to the floorboard or firewall of a car and its figures appear to show a rod and pawl mechanism that locks it into place.

The key issue tried was the presence or absence of sufficient proof of a motivation to combine the four prior art references. The Board had found that one skilled in the art (1) "would have considered Johnson's dead-bolt-type locking device to be disadvantageous compared to the Moore and WuROC devices to the extent that Johnson requires a key for setting in position and adjusting the device," and (2) "would have been motivated to make Johnson easier to use, albeit less secure, by replacing the dead-bolt mechanism" of Johnson with a suitable self-locking ratcheting mechanism. The district court found that these factual findings were "clearly erroneous" and found that adequate motivation to combine the references was not shown. See Winner, 11 F. Supp. 2d at 23-24, 48 USPQ2d at 1143-44. The district court also found that Winner established commercial success...

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