Sarkisian v. Winn-Proof Corp.

• Decision Date: 27 November 1981
• Docket Number: No. 78-3270,WINN-PROOF,78-3270
• Citation: 686 F.2d 671,213 USPQ 912
• Parties: Robert SARKISIAN, Plaintiff-Appellee, v.CORP., William A. Werner, and Wer-Nel Enterprises, Inc., Defendants- Appellants.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 671

686 F.2d 671

213 U.S.P.Q. 912

Robert SARKISIAN, Plaintiff-Appellee, v. WINN-PROOF CORP., William A. Werner, and Wer-Nel Enterprises, Inc., Defendants- Appellants.

No. 78-3270.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted Sept. 3, 1980.

Decided Nov. 27, 1981.

Grant L. Hubbard, Knobbe, Martens, Olson, Hubbard & Bear, Santa Ana, Cal., argued, for defendants-appellants; John W Stuart, Kolisch, Hartwell, Dickinson & Stuart, Portland, Or., on brief.

John A. Artz, Harness, Dickey & Pierce, Birmingham, Mich., for plaintiff-appellee.

Appeal from the United States District Court for the District of Oregon.

Before ALARCON and CANBY, Circuit Judges and HOFFMAN ^*, District Judge.

ALARCON, Circuit Judge:

Appellants Winn-Proof Corporation, William Werner, and Wer-Nel Enterprises, Inc. appeal from a judgment of the district court finding claims 3-5 of United States Letters Patents No. 3,646,696 ['the '696 patent'] valid and infringed. Appellee Robert Sarkisian cross-appeals from the court's judgment finding United States Letter Patent No. 3,662,482 ['the '482 patent'] invalid for double patenting. For the reasons stated below, we affirm the judgment of validity and infringement but reverse the finding as to double patenting.

The invention involved in this case is a portable sign stand of the sort commonly found at roadside construction sites and gasoline stations, used to display gasoline prices and other roadside warning messages. Despite the fact that the sign stand is light and portable, with a virtually weightless base, the sign stand can withstand wind conditions of up to 80 miles per hour without 'walking' or tipping over.

It is the unique interaction among the elements of the sign stand which enable it to combine the features of lightness and stability. The lightweight base of the stand is made up of tubular members or legs, arranged in either a parallel relationship or in a pyramid-like arrangement. (See Appendix, Figs. 1 and 2). The display boards of the sign stand are attached to the sign's base by a pair of non-concentric tension springs, similar to those found on gate closing devices. The 'initial' or 'pre-loaded' degree of compression of the springs, measured by the amount of force required to separate their coils, is set in relation to other dimensions of the sign stand, such as the length and weight of the base, the location of the sign stand's center of gravity, and the dimensions and weight of the display board. Under ordinary conditions, the springs are sufficiently rigid to hold the display board in an upright position. The springs' resilience is such, however, that the force required to uncoil the springs and deflect the display board attached to them is less than the force required to topple the entire sign stand over. As a result, the sign stand will not tip over in high winds, although the springs will bend and the display board deflect. Because of the operation of the springs in relation to the other dimensions of the sign stand, the base of the sign stand can be extremely lightweight without decreasing the sign stand's stability. ¹

In early 1975, defendant Werner developed the spring mounted sign stand shown in figure 3 of the Appendix. Werner's sign stand and the three different sign stands which succeeded it, (See Appendix, Figs. 4-6) utilized the same operating principles as Sarkisian's sign stand, though they differed from Sarkisian's in appearance. While Werner's sign stands were designed to hold large display boards, he sold them, for the most part, without display boards. Sarkisian brought this suit against appellants, claiming that their distribution of the Werner device infringed his patent.

Appellants challenge the district court's findings that the '696 patent is valid and that it was infringed. We will discuss each of these contentions in turn.

APPLICABLE LAW

In order for appellants to demonstrate that the trial court erred in upholding the validity of the Sarkisian patent, they must overcome the patent's statutory presumption of validity by clear and convincing evidence. Speed Shore Corp. v. Denda, 605 F.2d 469, 471 (9th Cir. 1979). Here, that presumption has been further strengthened on appeal, since the trial court made an independent examination of the pertinent prior art in making its determination of validity. ² Those factual findings must be upheld on appeal unless they are clearly erroneous. Saf-Gard Products, Inc. v. Service Parts, Inc., 532 F.2d 1266, 1272 (9th Cir. 1976).

VALIDITY OF THE '696 PATENT

The appellants claim that Sarkisian's invention was not patentable under 35 U.S.C. Sec. 103 because it was 'obvious' in light of the prior pertinent art, that is, it did not produce a 'synergistic' result. In our view, the district court correctly found that Sarkisian's device was not obvious. Moreover, as we discuss in detail below, to the extent that 'synergism' differs from the standard of obviousness set forth in Sec. 103 and interpreted in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), we expressly disapprove it as an appropriate standard of patentiability.

THE DISTRICT COURT'S ANALYSIS OF OBVIOUSNESS

35 U.S.C. Sec. 103 establishes that a patent cannot issue if the invention would have been obvious to a person of ordinary skill in the relevant art at the time the invention was made. ³ In Graham v. John Deere Co., the Supreme Court laid down a 3-part factual analysis to be followed by the federal courts in their determination of the obviousness of an invention under Sec. 103:

Under Sec. 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or non-obviousness of the subject matter is determined.

383 U.S. at 17, 86 S.Ct. at 693.

Appellants acknowledge that the obviousness or non-obviousness of an invention under Sec. 103, though ultimately a question of law, cannot be determined without strict adherence to those factual inquiries; moreover, both the cases of this circuit ⁴ and subsequent cases of the Supreme Court ⁵ have reaffirmed the necessity of strict adherence to these three factual inquiries in determining the obviousness of an invention. The factual findings made by the district court pursuant to Graham, like other factual findings, must be upheld by the appellate court unless they are clearly erroneous. Saf-Gard Products, Inc. v. Service Parts, Inc., 532 F.2d at 1272.

The appellants argue that the district court made a number of clearly erroneous factual findings in resolving the factual issues mandated by Graham. We disagree.

1. The appellants first take issue with the district court's assessment of the state of the 'prior art' at the time Sarkisian applied for the '696 patent. According to the appellants, the district court erroneously found that the relevant prior art was generally directed at permanently mounted signs, ignoring the fact that several of the most pertinent prior art patents related to unanchored sign stands. It is clear, however, that the court considered the fact that the prior art patents included unanchored sign stands; indeed, the four most relevant prior art patents identified by the court were for unanchored sign stands. ⁶ The court specifically noted that a number of prior patents describe sign stands with a pedestal-type, unanchored base, and specifically outlined the features of other patents which described unanchored sign stands. ⁷ Thus, the court's reference to 'permanently mounted signs' was decidedly not a reference to 'permanently anchored sign stands.' Appellant's contention is therefore without merit.

2. The appellants also argue that the court erred in finding that the concept of resistance to wind by 'downward deflection of the display area of the sign by coil springs' was not a method previously used by manufacturers of display signs. Appellants contend that the court erroneously failed to acknowledge the many prior art patents which utilize this principle.

The court's statement on the matter ⁸ is somewhat ambiguous: it is not completely clear whether the court meant to say that the prior art did not contain patents utilizing the principle of downward deflection or that devices utilizing that principle were simply not manufactured by makers of display signs. The portions of the record cited by the court in support of its statement, however, indicate that the latter meaning was intended. The truth of the latter claim, as noted by the district court, is certainly supported by the record. For example, Bernard Reams, president of the largest company manufacturing metal advertising signs, testified that he had never seen a spring mounted sign stand before Sarkisian's sign stand made its appearance. ⁹

Appellants also argue that the court committed reversible error in failing to make specific findings on the differences between the prior art and the Sarkisian patent. Specific factual findings, while the preferable practice, are not required where the court's entire opinion, viewed in the context of the record, shows that the district court in fact made the inquiries mandated by Graham. Palmer v. Orthokinetics, Inc., 611 F.2d 316, 319 (9th Cir. 1980). As outlined below, we find that the district court made the appropriate inquiries in reaching its conclusion that the invention was not obvious.

First, the court noted that prior art was generally directed at either permanently anchored sign stands, or at sign stands whose weighted base was essential for stability. By contrast, as the district court noted, Sarkisian's sign has a lightweight base and is genuinely and readily portable. The district court further noted that the approach taken by the prior art to the problem of sign stability was completely different from the approach utilized by Sarkisian. The...