Marcyan v. Nissen Corp.
| Decision Date | 16 July 1982 |
| Docket Number | No. S 80-322.,S 80-322. |
| Citation | 578 F. Supp. 485 |
| Parties | Walter MARCYAN and Marcy Gymnasium Equipment Co., a California corporation, Plaintiffs, v. NISSEN CORPORATION, a Delaware corporation, and Universal Gym Equipment, Inc., a Delaware corporation, Defendants. |
| Court | U.S. District Court — Northern District of Indiana |
COPYRIGHT MATERIAL OMITTED
William N. Farabaugh, South Bend, Ind., James E. Brunton, Glendale, Cal., for plaintiffs.
Gordon D. Copelein, New York City, for defendants.
This will state the legal basis for the findings of fact and conclusions of law entered here.
This is an action for patent infringement brought by plaintiff, Walter Marcyan, owner of U.S. Letters Patent Re 28,066, entitled "Single Station Multi-Purpose Body Exercising Device", and his licensee, Marcy Gymnasium Equipment Company (Marcy Gym), against defendants, Nissen Corporation (Nissen) and Universal Gym Equipment, Inc. (UGEI).
Only claims 7 and 8 of the patent are asserted to be infringed by defendants' devices known as the Power-Pak Models 200 and 400 (Brunton, Tr. 29).
The main issues are the validity and infringement of claims 7 and 8. Subsidiary to the validity issue is defendants' right, in manufacturing the accused Power-Pak devices, to follow the teachings of the public domain prior art and combine with it a well-known, public domain, invertible lifting arm (or handlebar) for the usual purpose of expanding the range of exercises which can be performed. Issues of lack of candor of the patentee before the Patent Office and unfair competition (15 U.S.C. § 1125(a)) are also presented.
A two day bench trial was held on February 21-22, 1982. At trial, all discovery depositions were published and admitted into evidence.
The patentee of the patent in suit, Walter Marcyan, is an individual who resides in Glendale, California. He is president of plaintiff, Marcy Gymnasium Equipment Co., Inc. He apparently has licensed the patent, by either implied or oral agreement, to plaintiff, Marcy Gymnasium Equipment Co. who manufactures and sells various devices thereunder.
Defendants Nissen and UGEI are both Delaware corporations and both are located at Cedar Rapids, Iowa. They share some common facilities and, in some respects, common officers and employees. The Power-Pak devices here in question are manufactured at facilities in Cedar Rapids and are sold throughout the United States by defendant UGEI.
U.S. Patent Reissue 3,635,472 (Ex. 1) here in suit (hereafter '066 patent) was granted on July 9, 1974. It is based upon patent application Serial No. 328,789 filed February 1, 1973 (Ex. 21). The '066 reissue patent is an outgrowth of original U.S. Patent 6,635,472, granted January 18, 1972 based upon application Serial No. 817,729 filed April 21, 1969 (Ex. 20).
The '066 patent (Ex. 1 and the expanded drawing of Ex. 4a showing the preferred embodiment), discloses an exercise machine which is used in the manner of a conventional barbell. It has a pair of upright vertical tracks 22 and 23 and a carriage 21 having wheels, or bearings 46, at its four corners which ride in the tracks. A stack of weights 25 is connected to the carriage through a cable system 63. The weights urge the carriage in a downward direction. A trainee raises the carriage and the weights by pushing or pulling, depending on the exercise a lifting arm (handlebar) 24 upwardly (Clerk Tr. 370-371).
In the machine of the patent, the carriage always comes to rest at a predetermined position and is supported by fixed stops 36 mounted in the tracks (see patent Ex. 1, col. 3, lines 40-42) (Marcyan Tr. 134-136; Chovanes Tr. 251-252; Hall Tr. 224).
Since the starting position of the carriage is fixed by the stops 36, vertical adjustability of the lifting arm relative to the carriage must be is provided (1) to permit persons of different heights to perform the same exercise and (2) to permit a person of a given height to perform different exercises (see Figs. 10-14, and column 3, first paragraph of the patent, Ex. 1). (Marcyan, 8/17/81 Dep. 23-26, Tr. 80).
The feature constituting the alleged invention of the patent is to provide the lifting arm vertical adjustability by fitting the carriage with a plurality of vertically spaced sockets 39 (four being shown in the patent and Ex. 4a) (Chovanes Tr. 250). This permits the starting height for lifting arm 24 to be adjusted by inserting it in a selected socket. The lifting arm 24, which is of conventional shape (Marcyan, 1/26/82 Dep. 32), has: a horizontal shaft or shank portion 40 for insertion into the selected carriage socket 39; a V-shaped shoulder-contacting portion 48 which is bent with respect to the shank, through which portion the head of the trainee extends; and two horizontally extending hand grips 47. The lifting arm's vertical adjustability relative to the carriage is accomplished by inserting its horizontally extending shaft 40 into a selected one of the four vertically spaced sockets 39.
In the embodiment of Figs. 1-14 of '066, the lifting arm 24 can be inverted so that the hand grips 47 can point up instead of their normally downward position. This feature, as discussed below, is old. Plaintiffs now maintain (Marcyan, Tr. 74 and 77) that this provides "minor" vertical adjustability. Yet the patent also discloses one other embodiment in Figs. 15-18 by which the lifting arm is adjustable vertically and is not invertible, and the file history discusses three other vertically adjustable but non-invertible alternatives (Marcyan Tr. 127-130; Chovanes 266-267, Ex. LL). Nowhere in the patent is there any disclosure of adjusting the vertical height of the lifting arm relative to the carriage solely by inverting the arm. Clearly, the thrust of the patent is the vertical adjustability by the spaced socket arrangement (Chovanes, Tr. 266).
Defendants' accused Power-Pak devices (the pertinent portion of the Models 200 and 400 are the same) is shown schematically in plaintiffs' Ex. 32. See also the photos of Exs. Z1, Z2 and Z3.
The Power-Pak has a pair of vertical uprights, or tracks. There is a carriage having wheels at its corners which ride along the tracks. The Power-Pak carriage has a single square socket into which is inserted the shank of a lifting arm or other attachment for performing different types of exercises, e.g., leg press, squat, etc. (Geist Tr. 189, 201, Exs. Z1, Z2 and Z3. To adjust the starting position for a different height person or for a different exercise, the carriage is moved relative to the uprights. As the carriage height is adjusted by moving it vertically, it carries the lifting arm with it.
The Power-Pak's lifting arm, which is of conventional bent end construction may also be inverted relative to the socket so that its hand grips point upward or downward. This arrangement permits one or two more exercises, e.g., a standing press, to be accomplished in a situation where the user is tall and/or the room height is low. (Marcyan Tr. 140).
Claims 7 and 8 are invalid for obviousness under 35 U.S.C. Sec. 103. The claims are also invalid as anticipated under 35 U.S.C. Sec. 102(b).
35 U.S.C. Sec. 102(b) states in relevant part:
A person shall be entitled to a patent unless ... (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States,
As to invalidity for obviousness under 35 U.S.C. Sec. 103:
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 of ordinary skill in the art to which said subject matter pertains.
The Sec. 103 obviousness ground of invalidity is discussed first.
It is settled that, while the validity of the claims under 35 U.S.C. Section 103 is a matter of law, a three-pronged factual test is to be resolved involving the: (1) scope and content of the prior art, (2) differences (if any) between the prior art and the subject matter of the claims at issue, and (3) level of ordinary skill in the pertinent art to which the alleged invention pertains. Against this background, the obviousness or non-obviousness of the subject matter is to be determined. Graham v. John Deere & Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Harvestall v. Hochstetler, 656 F.2d 1232, 1235 (7th Cir. 1981); Saunders et al. v. Air-Flo Co., 646 F.2d 1201, 1204 (7th Cir.1981).
The prior art was considered against the backdrop of the two claims here in suit. Claims 7 and 8 contain the following basic elements, limitations or "components" (referred to by the letters of the clauses of the claims):
(f) a connection between the carriage and the weights so that the weights bias the carriage downward.
Each of the claimed elements is old and each has been used before in the exercise machine field, in the combination disclosed and claimed in the patent in suit (Chovanes, Tr. 249-250).
The prior art relief upon by defendants is discussed below using the same letters as the claim clauses for the various components.
The prior art 1961 machine first appears in the file history (Ex. 21) of the application for the reissue patent in suit and...
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