Iron Grip Barbell Co., Inc. v. Usa Sports, Inc.

• Decision Date: 14 December 2004
• Docket Number: No. 04-1149.,04-1149.
• Citation: 392 F.3d 1317
• Parties: IRON GRIP BARBELL COMPANY, INC., Plaintiff-Appellant, and York Barbell Company, Inc., Plaintiff, v. USA SPORTS, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

392 F.3d 1317

IRON GRIP BARBELL COMPANY, INC., Plaintiff-Appellant, and York Barbell Company, Inc., Plaintiff, v. USA SPORTS, INC., Defendant-Appellee.

No. 04-1149.

United States Court of Appeals, Federal Circuit.

DECIDED: December 14, 2004.

Rehearing and Rehearing En Banc Denied February 10, 2005.

Brian M. Daucher, Sheppard Mullin Richter & Hampton LLP, of Costa Mesa, California, argued for plaintiff-appellant. With him on the brief was Yael Karabelnik.

Terril G. Lewis, Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P., of Houston, Texas, argued for defendant-appellee. Of counsel was Louis Brucculeri.

Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and DYK, Circuit Judge.

DYK, Circuit Judge.

Iron Grip Barbell Company ("Iron Grip") appeals from the judgment of the United States District Court for the Central District of California. The district court found claims 1 to 3 and 6 to 8 of Iron Grip's patent, U.S. Patent No. 6,436,015 ("the '015 patent"), to be invalid as obvious. We affirm.

BACKGROUND

Iron Grip is a manufacturer of weight plates used with fitness equipment such as barbells and is the assignee of the '015 patent. Claim 1 of the '015 patent claims:

A weight plate for physical fitness including: a plate body formed with a central throughbore and ... further formed with solely a triad of spaced apart elongated handle openings disposed generally equiangularly ..., said openings having respective outboard edges cooperating with said plate to define a triad of integral handle elements for grasping by a single hand to effect transport of said weight plate.

Id. col. 4, ll. 24-35 (emphasis added). The other claims in the '015 patent at issue here depend from claim 1 and are not different for present purposes.

Typically, a barbell consists of a rigid bar and removable weight plates attached on both ends. Traditional weight plates had a single hole in the center for attachment to the barbell. A key problem with traditional single-hole weight plates was that they were difficult to grasp and transport. Iron Grip's '015 patent addresses this defect of traditional weight plates by disclosing a weight plate with three elongated openings near the periphery of the plate that function effectively as handles.

During the prosecution of the '015 patent, Iron Grip disclosed prior art showing, inter alia, weight plates with one elongated grip, U.S. Patent No. 4,199,140 ("the '140 patent"), and two elongated grips, U.S. Patent No. 5,137,502 ("the '502 patent"). The examiner further considered other prior art including barbell weight plates with four openings. U.S. Patent No. 4,618,142. After multiple rejections on grounds of obviousness, the '015 patent eventually issued on Aug. 20, 2002.

USA Sports, Inc. ("USA Sports") is a competing manufacturer of weight plates. It also manufactures a three-grip plate. In May of 2002, Iron Grip sued USA Sports in the district court for infringement of an unrelated patent, and subsequently amended its complaint to state an action for infringement of claims 1-3 and 6-8 of the '015 patent. USA Sports defended on the basis that the asserted claims in the '015 patent were invalid as obvious in light of the prior art. Both sides moved for summary judgment. The district court initially granted summary judgment in favor of Iron Grip, finding that USA Sport's weight plate infringed the '015 patent; and denied USA Sport's summary judgment motion as to the invalidity of the '015 patent, holding that a finding of invalidity for obviousness required a "suggestion, motivation, or teaching in the prior art to combine the elements [from separate references]." (J.A. at 1897.) Upon motion for reconsideration, however, the district court held that the contested claims in the '015 patent were obvious. The district court found that its prior understanding of the law was "unduly restrictive." (J.A. at 2921.) Instead, it held that "the cases ... permit the court to look at the overall picture of what's really going on.... The obviousness test ... calls upon the court to just simply exercise common sense...." (Id.) Applying this new test, the district court held that "it would have been obvious to a layman to combine the prior art," and invalidated claims 1-3 and 6-8 of the '015 patent. (J.A. at 3.) Iron Grip appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).¹

DISCUSSION

I

We review the district court's grant of summary judgment without deference. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1379 (Fed.Cir.2001). We therefore affirm the district court only if there is no genuine issue of material fact as to the invalidity of the claims. In making this determination, a patent is presumed to be valid. 35 U.S.C. § 282 (2000); Cardinal Chem. Co. v. Morton Int'l, 508 U.S. 83, 93 n. 15, 113 S.Ct. 1967, 124 L.Ed.2d 1 (1993). USA Sports bears the burden of proving invalidity by clear and convincing evidence. Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed.Cir.1984).

In determining obviousness, we employ the four-part test set forth in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). This test requires us to examine (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) the objective evidence of nonobviousness. Id. at 17-18, 86 S.Ct. 684; see also 35 U.S.C. § 103 (2000).

We note that neither side disputes that weight plates showing one, two and four elongated openings were within the prior art. We also note that neither side disputes that the proper level of ordinary skill in the art is that of a layman. Therefore, the only points of contention in the obviousness inquiry are the differences between the claimed invention and the prior art, and the objective evidence of nonobviousness.

II

We turn first to a comparison between the prior art and the claimed invention. In this inquiry, we are mindful of the repeated warnings of the Supreme Court and this court as to the danger of hindsight bias. See, e.g., Graham, 383 U.S. at 36, 86 S.Ct. 684 (consideration of secondary factors "serve[s] to guard against slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue" (internal quotations and citations omitted)); In re Kotzab, 217 F.3d 1365, 1369 (Fed.Cir.2000) ("[T]he very ease with which the invention can be understood may prompt one to fall victim to the insidious effect of a hindsight syndrome wherein that which only the invention taught is used against its teacher." (internal quotations omitted)). We note in this respect that the district court's use of an "overall picture" and "common sense" test of obviousness falls squarely into the hindsight trap. See In re Lee, 277 F.3d 1338, 1345 (Fed.Cir.2002).

Where an invention is contended to be obvious based upon a combination of elements across different references, our cases require that there be a suggestion, motivation or teaching to those skilled in the art for such a combination. In re Fine, 837 F.2d 1071, 1074 (Fed.Cir.1988). This requirement prevents the use of "the inventor's disclosure as a blueprint for piecing together the prior art to defeat patentability — the essence of hindsight." Ecolochem, Inc. v. So. Cal. Edison Co., 227 F.3d 1361, 1371-72 (Fed.Cir.2000) (quoting In re Dembiczak, 175 F.3d 994, 999 (Fed.Cir.1999)).

In this case, however, obviousness does not arise from any combination of elements from the prior art. Rather, the issue of the '015 patent's obviousness arises because the prior art showed one, two and four elongated handles on weight plates. A single elongated handle on a weight plate was disclosed by the '140 patent. Two elongated handles on a weight plate was disclosed by the '502 patent. Four elongated handles on a weight plate was disclosed by U.S. Design Patent No. 406, 183 ("the '183 patent"). Reproductions of the two and four grip weight plates in the prior art, and Iron Grip's three-grip weight plate, appear below:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The key feature of the '015 patent, the fact that there are three elongated handles, falls within a range disclosed by the prior art. Where the "prior art ... discloses a range encompassing a somewhat narrower claimed range," the narrower range may be obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed.Cir.2003). "[W]hen the difference between the claimed invention and the prior art is the range or value of a particular variable," then a patent should not issue if "the difference in range or value is minor." Haynes Int'l v. Jessop Steel Co., 8 F.3d 1573, 1577 n. 3 (Fed.Cir.1993); see also Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed.Cir.1985) (invention found obvious because it was close to prior art range). Thus simply because an invention falls within a range disclosed by the prior art does not necessarily make it per se obvious. Both the genus and species may be patentable.

Nonetheless, where there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness. But the presumption will be rebutted if it can be shown: (1) That the prior art taught away from the claimed invention, In re Geisler, 116 F.3d 1465, 1471 (Fed.Cir.1997); or (2) that there are new and unexpected results relative to the prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed.Cir.1990).

There is, to be sure, one distinguishing feature of these range cases. Each involved a range disclosed within a single patent, while here the range is disclosed in multiple prior art patents. But, under the circumstances of this case, that is a distinction without a difference. The prior art suggested that a larger number of elongated grips in exercise weights was beneficial,² thus plainly suggesting that one skilled in the art look to the...