Diversified Products Corporation v. Sports Stores, Inc.

• Decision Date: 31 December 1968
• Docket Number: Civ. No. 16848.
• Citation: 294 F. Supp. 375
• Parties: DIVERSIFIED PRODUCTS CORPORATION and Newman, Dukes & Cline, Inc., Plaintiffs, v. SPORTS STORES, INC., and Manson-Billard, Inc., Defendants.
• Court: U.S. District Court — District of Maryland

294 F. Supp. 375

DIVERSIFIED PRODUCTS CORPORATION and Newman, Dukes & Cline, Inc., Plaintiffs, v. SPORTS STORES, INC., and Manson-Billard, Inc., Defendants.

Civ. No. 16848.

United States District Court D. Maryland.

December 31, 1968.

George M. Hopkins, Edward Taylor Newton and Newton, Hopkins & Ormsby, Atalnta, Ga., and Francis J. Meagher and Goodman, Meagher & Enoch, Baltimore, Md., for plaintiffs.

Harvey B. Jacobson, Jr., Washington, D. C., and Harry K. Lott and Herbert J. Belgrad, Baltimore, Md., for defendants.

HARVEY, District Judge:

The plaintiffs are here seeking an injunction and damages for the alleged infringement of two different patents, United States Patent No. 3,171,652, a mechanical patent, and United States Design Patent No. 203,608, a design patent. The mechanical patent is for an exercising weight filled with solidified material and the second patent in suit is for a design for a barbell weight.

The mechanical patent (Newman '652) was issued on March 2, 1965 to Joe W. Newman. As a result of subsequent assignments, it was owned at the time of suit by the two corporate plaintiffs, Diversified Products Corporation and Newman, Dukes & Cline, Inc. The design patent (James '837) was issued on February 22, 1966 to Forrest H. James, Jr. and thereafter assigned to the plaintiff Diversified Products Corporation. The defendant, Manson-Billard, Inc., manufactures and sells exercising weights and other products in the exercising field and is thereby in competition with the plaintiffs. The other defendant, Sports Stores, Inc., has purchased exercising weights from Manson-Billard and, in turn, has sold such products at retail in this judicial district.¹ The defendants claim that the mechanical patent is invalid because of (a) lack of novelty under 35 U.S.C. § 102, (b) obviousness of the subject matter under 35 U.S.C. § 103, and (c) indefiniteness under 35 U.S.C. § 112. It is likewise claimed that the design patent is invalid because of anticipation, and defendants deny infringement of both patents.²

Most of the testimony and argument and substantially all of the exhibits in this case were directed to the issues that relate to the mechanical patent, and the discussion that follows will therefore be primarily focused on that patent.

I. The Mechanical Patent

Only one claim is involved in Newman '652. What is claimed is:

"An exercising weight of fixed value for use with barbells comprising a shell of resilient plastic material having a cavity therein filled with a solidified dense material, said shell having walls with indentations therein projecting into the solidified dense material within the shell."

Analysis of this claim indicates that the exercising weight alleged to be the invention combines three separate elements: (1) a shell of resilient plastic material; (2) a cavity in such shell filled with a solidified dense material; and (3) indentations in the walls of the shell projecting into the solidified dense material within the shell. According to the specifications, weights used on barbells and other exercising apparatus have customarily been made of cast iron or other metals. The claimed invention replaces these metal weights with a plastic shell filled preferably with concrete or with some other dense material. It is claimed that such weights will not rust and are therefore cleaner and more attractive than metal, that they will not mar wood or tile floor coverings, and that the form of the invention prevents chipping, spilling or other undesirable loss of weight.

Validity

Four United States patents and one foreign patent were cited by the examiner as references in Newman '652 as follows:

                                         UNITED STATES PATENTS
                      Inventor           Device         Number           Issuance Date
                      Calvert           dumb bell        907,965     December 29, 1908
                      Krudop            barbell        1,270,034     June 18, 1918
                      Smith             exercising     1,918,142     July 11, 1933
                                        device
                      Trzesniewski      barbell        2,447,218     March 9, 1945
                                            FOREIGN PATENT
                      Longbottom        exercising       499,305     January 16, 1939
                      (Great Britain)   device
                

Examination of the record of the prosecution of the patent in suit discloses that the examiner placed particular reliance on Krudop '034, Trzesniewski '218 and Longbotton '305 in rejecting various claims originally submitted by the inventor. Calvert '965 merely discloses a dumb bell which could be filled with shot for increased weight while in Smith '142 the metal weights at either end of the device were to be connected to the handle by springs and enclosed in a covering or jacket of rubber or other suitable material. Krudop '034 discloses a barbell with adjustable weights made of reinforced concrete. In Trzesniewski '218 which is also a patent for a barbell, the individual metallic weights are covered by a plastic or cushion cover to eliminate noise and a hard impact when the weights are used on a hard surface floor. Longbottom '305 discloses a tin or iron container of various sizes to hold concrete and to act as a barbell disc for use in weight lifting and physical culture.

Newman's original application was filed on September 13, 1961 and contained eight claims relating to "improvements in the design of the weights used in barbells and the like." All of such claims were rejected, and this first application was abandoned after the filing of a second application by the same inventor on March 21, 1962. The second application presented fifteen claims, all of which were rejected by the examiner. Following subsequent amendments, the one claim that was finally allowed was presented as claim 21 and was a rewriting of claim 14 of the second application.

In rejecting claim 15 in the amendment to the second application filed on March 19, 1963, the examiner said the following:

"Subsequent to the date of the British patent, pliable materials, e. g. rubber and rubberlike plastics, such as polyethylene, were used for encasing weights, as exemplified by the patent to Trzesniewski. To substitute any selected one of this recently utilized group of materials for the tinned iron container of the British patent would be obvious to one skilled in the art."

The prosecution history thus indicates that the patent examiner was of the opinion that a combination of a plastic shell and a concrete filler for use as an exercising weight was not patentable. Several of the prior art patents cited by the examiner disclosed a plastic shell or a concrete filler, but none disclosed indentations in the shell walls. Therefore, the element which was added and which the examiner found to be not disclosed by the prior art consisted of the indentations in the shell projecting into the filler material.

Defendants contend that the most pertinent prior art was not cited or considered by the patent examiner. Defendants rely on U. S. Patent No. 3,185,255 for a ballast element issued to M. S. Bird and on two different devices, the Mattel "Power Arm" barbell weight and the Marine Corps barbell weight. 35 U.S.C. § 282 provides that a patent shall be presumed valid and that the burden of establishing invalidity rests upon the party asserting it. See Collins v. Kraft, 144 F.Supp. 162, 168 (D.Md.1956). However, the presumption is rebuttable. Triumph Hosiery Mills, Inc. v. Alamance Industries, Inc., 299 F.2d 793, 801 (4th Cir. 1962), cert. den. 370 U.S. 924, 82 S.Ct. 1566, 8 L.Ed.2d 504 (1962). If pertinent prior art was not cited by the patent examiner during his consideration of the application, the presumption of validity is weakened or destroyed. Heyl and Patterson, Inc. v. McDowell Co., 317 F.2d 719, 722 (4th Cir. 1963); Maibohm v. RCA Victor Co., 89 F.2d 317, 321 (4th Cir. 1937).

Bird '255 discloses a ballast element which is comprised substantially of concrete material. Such element includes a container made entirely of plastic material, the container being formed into a predetermined permanent shape and being filled with a hardened concrete substance. The evidence discloses that such ballast element does not have indentations projecting into the filler material, although the shape of the container is such that there is an indentation projecting into the concrete material near the base of the container which would have a similar if not the identical effect as that claimed for the indentations of the Newman patent.

Mattel, Inc. is a manufacturer of toys located in Hawthorne, California. In 1958 and 1959, this company manufactured and sold a product known as "Power Arm Barbells". Each set consisted of a number of different sized weights and bars and included an instruction sheet for assembly. The weights were in fact polyethylene shells containing a cavity to be filled at the option of the user with water, sand or wet sand. The walls of each shell contained indentations which projected into the filler material within the shell. These barbell sets were described and pictured in the Mattel catalogs for both 1958 and 1959.

The Marine Corps device was a homemade barbell constructed by filling large juice cans with cement and securing them to the ends of 5-foot lengths of iron pipe. The tin juice cans had 3-ringed indentations which projected into the concrete with which the can was filled. The January 1959 issue of the physical fitness publication Strength and Health contains on its cover a color photograph showing Marine Corps recruits using these homemade barbells in their training. An article commencing at page 24 of such publication and written by Captain (now Major) George E. Otott, describes the manner in which these devices were made.

(a) Anticipation

An invention is anticipated when the prior art disclosure is identical in substance with it. Goodwin v. Borg-Warner Corp., 157 F.2d 267 (6th Cir. 1946), cert. den. 329 U.S. 799, 67 S.Ct. 491, 91 L.Ed. 683 (1947); Deller's Walker...