546 F.2d 530 (3rd Cir. 1976), 76-1023, Universal Athletic Sales Co. v. American Gym, Recreational & Athletic Equipment Corp., Inc.

Docket Nº:76-1023.
Citation:546 F.2d 530
Party Name:192 U.S.P.Q. 193 UNIVERSAL ATHLETIC SALES CO., a corporation, Appellant, v. AMERICAN GYM, RECREATIONAL & ATHLETIC EQUIPMENT CORPORATION, INC., et al.
Case Date:November 19, 1976
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit
 
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546 F.2d 530 (3rd Cir. 1976)

192 U.S.P.Q. 193

UNIVERSAL ATHLETIC SALES CO., a corporation, Appellant,

v.

AMERICAN GYM, RECREATIONAL & ATHLETIC EQUIPMENT CORPORATION,

INC., et al.

No. 76-1023.

United States Court of Appeals, Third Circuit

November 19, 1976

Argued Sept. 9, 1976.

As Amended Dec. 30, 1976.

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Robert D. Yeager, Robert DeMajistre, Pittsburgh, Pa., Lewis M. Dalgarn, Los Angeles, Cal., for appellant; Nilsson, Robbins, Dalgarn & Berliner, Los Angeles, Cal., of counsel.

Thomas H. Murray, Pittsburgh, Pa., Hymen Diamond, Monroeville, Pa., for appellees.

Floyd B. Carothers, Pittsburgh, Pa., for appellee, Donald E. Pinchock.

Before ADAMS, ROSENN and GARTH, Circuit Judges.

OPINION

ADAMS, Circuit Judge.

At issue in this case is the validity of a United States patent 1 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.

Two issues underlie the basic question of patent validity now before the Court. The first concerns the controlling weight accorded by the trial judge to the testimony

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of defendants' principal expert witness, an associate in the law firm representing two of the defendants. Assuming that such testimony deserved little or no weight, as plaintiff maintains, we must then decide the second issue, whether there was nonetheless evidence sufficient to support the decision of the district court.

I.

Modern technology has, of course, pervaded almost every province of human endeavor. The Zinkin patent demonstrates the verity of this postulate, for its deals with a somewhat unusual activity weight-lifting. Specifically, the patent relates to the chest-press exercise, one of the cornerstones of the bodily arts. As athletes and physical fitness enthusiasts well know, the chest press enables the zealous practitioner to develop the musculature of his upper torso. Like many modern advances, the Zinkin patent attempts to retain the advantages of old methods, while conferring added benefits with the new.

In the traditional chest press, the exerciser lies on a bench and raises a free barbell from his chest to a position in which his arms are fully extended. He raises and lowers the barbell for as long as he desires or is able. The exercise requires the continuing assistance of another person, the "spotter." Not only must the spotter hand the barbell to the exerciser at the inception of the routine, but he must also attempt to retrieve the bar should it begin to totter. Occasionally, the spotter is unable to catch the barbell so that it falls upon the exerciser, causing injury that can be quite serious.

The patent in this appeal discloses an apparatus which permits an exerciser to simulate, safely and effectively, the chest press exercise. 3 To use the patented apparatus, the exerciser lies upon a table in a supine position and pushes against handles in an upward movement. These handles shift in an arcuate fashion, analogous to the movement of the bar in the chest press exercise. They extend from a box-like structure which supports and contains the lifting mechanism. The design of the apparatus is such that the handles, the attached bar and the weights cannot strike the exerciser even should he falter. In addition, the Zinkin machine may be utilized without the assistance of a spotter. The patented apparatus thus eliminates the safety hazards posed by the conventional chest press and obviates its manpower requirements as well. 4

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This action was initiated by Universal against the defendants as part of a complex litigation involving, inter alia, questions of patent infringement, unfair competition, copyright infringement and antitrust violations. When Universal alleged patent infringement in its complaint, the defendants pleaded invalidity of the patent itself. The district court severed the patent infringement and unfair competition issues for trial, 5 and the patent issue, alone, is before us on appeal. After a nonjury trial, the district court initially adjudged the Zinkin patent entirely invalid. However, an amended order vacated the earlier judgment, leaving as invalid patent claims numbered 3 and 4.

Defendants had developed a body-exercising apparatus very similar to that covered by the Zinkin patent. Indeed, the district court found that "the defendants' chest press apparatus would infringe the Zinkin patent if the Zinkin patent were not . . ." invalid. 6 In their briefs, defendants list several differences between their own device and that of Zinkin. Nevertheless, the defendants do not vigorously contest the determination of infringement by the trial judge. Instead, they rely solely upon his ruling of invalidity, and attempt to buttress his analysis in this respect. At trial, as in the appeal now before us, the primary focus was on whether the Zinkin patent was "anticipated" or made "obvious" by the prior art.

Two references were relied upon by the district court in holding the Zinkin claims invalid: a patent issued to C. A. Simmons in 1871 7 and a magazine photograph, dated 1950, of a lifting machine designed by Sam Loprinzi. 8 Disclosing a lifting machine for "developing the muscular system," the Simmons device consists of weighted levers which the exerciser apparently lifts and lowers as part of the exercise. The Loprinzi machine is described in the photograph caption as a "super-duper pressing apparatus," but the magazine caption itself provides no information as to the features of the device or how it was to be used. Defendants' principal expert witness attempted to explain its features based solely on his examination of the photograph.

That expert was Firman Lyle, an associate lawyer in the law firm that represented several of the defendants. 9 Controlling weight was given by the district court to his testimony as to obviousness and anticipation: "The court chooses to adopt the view of defendant's expert Firman Lyle." 10 Relying on the Simmons patent, the Loprinzi photograph, and Mr. Lyle's testimony as to these references, the trial court concluded that the two central claims of the Zinkin patent are void, since they were anticipated and made obvious by prior art.

For reasons to be discussed in this opinion, we have decided that the judgment of the district court must be vacated. 11

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II.

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.

Having selected the relevant art, we proceed to consider whether Mr. Lyle possessed the qualifications to be an expert in this case. It is apparent that he had little familiarity with the design of weight-lifting machines prior to the present litigation. The record reveals that Mr. Lyle did not undertake, even in connection with this law suit, any extensive study of technical references with respect to body-exercising apparatus. Rather, his examination was confined to the elements of prior art selected by defendants' counsel, i. e., the Simmons patent and the Loprinzi photograph. As a result, it is doubtful whether he was suited to serve as an expert here.

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Even assuming that the disciplines designated by the parties were the apposite ones, Mr. Lyle's...

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