Stevenson v. INTERNATIONAL TRADE COM'N
| Decision Date | 28 February 1980 |
| Docket Number | Appeal No. 79-12. |
| Citation | 612 F.2d 546 |
| Parties | Richard L. STEVENSON, Appellant, v. INTERNATIONAL TRADE COMMISSION, New Zeal Enterprises Co., Prophet International Co., Lido Trading Co., Ltd., Hardy Enterprise Corp., Appellees. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Keith D. Beecher, Los Angeles, Cal., attorney of record for appellant.
Russell N. Shewmaker, Gen. Counsel, Jeffrey M. Lang, Deputy Gen. Counsel, Washington, D. C., N. Tim Yaworski, attorneys of record for appellee, Intern. Trade Commission, Myron Solter, Washington, D. C., and David Simon, Washington, D. C., attorneys of record for appellees, New Zeal Enterprises Co., et al.
Before MARKEY, Chief Judge, RICH, BALDWIN and MILLER, Associate Judges, and WATSON, Judge.*
This is an appeal from the November 13, 1978 order of the United States International Trade Commission (Commission) which terminated investigation No. 337-TA-37, In the Matter of Certain Skateboards and Platforms Therefor, in view of its determination that no violation of section 337 of the Tariff Act of 1930, as amended by the Trade Act of 1974, 19 U.S.C. § 1337,1 exists in the importation into, or sale in, the United States of certain skateboards and platforms therefor. We reverse and remand.
On November 4, 1977, appellant, Richard L. Stevenson (Stevenson) filed an amended complaint with the Commission pursuant to § 337, alleging that unfair methods of competition exist in the importation and distribution of certain skateboards alleged to infringe claims 1, 2, 7 and 8 of U. S. Patent No. 3,565,454 to Stevenson. The filing date of the Stevenson patent is June 12, 1969. Claim 1 is the broadest claim, and reads:
The subject device of the claims at issue is commonly known as a kicktail skateboard.
Foreign manufacturers and exporters named and served in the investigation were New Zeal Enterprises Co., Ltd., Lido Trading Co., Ltd., Prophet International Co., Ltd., Hardy Enterprise Corp., and Amapala Marine (name corrected to S.K.B. de Hondiuras sic by order issued March 31, 1978). Importers named and served were Sport-master, Inc., Marco Polo Co., National Sporting Goods Corp., Dixie Trading Co., and Woodline Products Co. The only named respondents to appear at the hearing (referred to collectively as the "Taiwan manufacturers") were New Zeal Enterprises, Co., Ltd., Prophet International Ltd., Lido Trading Co., Ltd., and Hardy Enterprise Corp. It was stipulated by the active parties that all named respondents were engaged in either export to or importation into the United States of the articles in question.2
An evidentiary hearing was conducted by a Commission Administrative Law Judge (ALJ). His recommendation was that the Commission determine that there is no violation of § 337 in the importation and sale in the United States of skateboards and platforms therefor meeting claims 1, 2, 7 and 8 of the Stevenson patent. This recommendation resulted from his conclusion that the subject claims are invalid as obvious under 35 U.S.C. § 103 in view of prior art.
The Commission, with Chairman Parker dissenting and Commissioner Stern not participating, ordered the investigation terminated on the basis of a determination that no violation of § 337 exists. As reflected in the joint opinion of Commissioners Moore and Bedell and the concurring opinion of Commissioner Alberger, the basis of this determination was the finding that claims 1, 2, 7 and 8 of the patent to Stevenson are invalid for purposes of § 337 as obvious in view of prior art pursuant to 35 U.S.C. § 103.3
We face the dispositive issue whether the subject matter of claims 1, 2, 7 and 8 of the patent to Stevenson would have been obvious to one of ordinary skill in the art of designing skateboards at the time the invention was made.
OPINIONThe Commission's brief argues that the standard of review in this case is whether the determination of the Commission is clearly contrary to the weight of the evidence before it. We do not agree.
This determination was based on the Commission's finding that the subject claims of the Stevenson patent were invalid as obvious in view of prior art under 35 U.S.C. § 103. However, "obviousness is a legal conclusion based on factual evidence, Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966) * * * and not a factual determination." In re Warner, 379 F.2d 1011, 1016 n.6, 54 Cust. & Pat.App. 1628, 1634 n.6, 154 USPQ 173, 177 n.6 (1967). Therefore the proper issue before us is whether the Commission erred, as a matter of law, in holding that the claims were invalid under 35 U.S.C. § 103. In deciding this issue, the court will make "an independent determination as to the legal conclusions and inferences which should be drawn from the findings of fact." See United States v. Mississippi Valley Generating Co., 364 U.S. 520, 526, 81 S.Ct. 294, 5 L.Ed.2d 268 (1961).
Under § 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 nonobviousness of the subject matter is determined. Graham v. John Deere Co., supra 383 U.S. at 17, 86 S.Ct. 684.
The Taiwan manufacturers argue that the Abbott water ski patent, U. S. patent No. 3,056,148, and the Kelly hydroplane surfboard patent, U. S. patent No. 3,111,695, are relevant prior art. The patents disclose, respectively, a water ski and a surfboard with an upturned aft plane.
In a simple mechanical invention a broad spectrum of prior art must be explored and it is reasonable to permit inquiry into other areas where one of ordinary skill in the art would be aware that similar problems exist. In re Heldt, 433 F.2d 808, 58 Cust. & Pat.App. 701, 167 USPQ 676 (1970). Whether certain art is to be considered as prior art, we must consider the similarities and differences in structure and function of the inventions disclosed in the references. In re Ellis, 476 F.2d 1370, 177 USPQ 526 (CCPA 1973). There is similarity in structure, with the waterski, the surfboard, and the kicktail deck all having an upturned aft plane. However, the problem of maneuvering a wheeled vehicle across a hard surface would appear to differ significantly from the problem of maneuvering a surfboard or waterski through water, a fluid medium. Therefore, we agree with the majority of the Commission that one of ordinary skill in the art of designing skateboards would not have turned to these patents for guidance on a problem of maneuverability of a wheeled vehicle.
The Taiwan manufacturers also strongly argue anticipation of the subject claims by the Langton primitive woodblock skateboard and the Gottlieb heelplate skateboard. One witness, Mr. Langton, testified that he knew of a primitive woodblock skateboard prior to appellant's invention. This was a plank of wood with roller skates attached underneath, and a two-by-four shaved off at an angle attached across the rear of the plank. No physical exhibit was offered. Mr. Langton is president of a company which manufactures kicktail skateboards. Another witness, Mr. Gottlieb, testified that he produced a "heelplate" skateboard prior to Stevenson's invention. This was a flat skateboard with a shoe heel attached to the upper surface of the board aft of the rear wheels. No physical exhibit was presented. Mr. Gottlieb also manufactures kicktail skateboards and at the time of his testimony was defending a patent infringement suit brought against Sears and Roebuck Company by appellant on the same patent now under consideration. Neither witness could recall the position of the rear wheels relative to the aft end.
The evidence presented is insufficient to establish the existence of any anticipating devices. Proof of such devices, alleged to be complete anticipations of the subject patent, must be clear and convincing to overcome the presumption of validity.4 Uncorroborated oral testimony of prior inventors or users with a demonstrated financial interest in the outcome of the litigation is insufficient to provide such proof. The Barbed Wire Patent, 143 U.S. 275, 284, 12 S.Ct. 450, 36 L.Ed. 154 (1892); Jones Knitting Corp. v. Morgan, 361 F.2d 451, 149 USPQ 659 (3rd Cir. 1966).
A physical exhibit, RX-13, of a rocker skateboard has been admitted into the record. A rocker board differs from a flat skateboard in that the platform of the rocker board has an arcuate, continuously curved configuration with the leading and trailing edges each higher than the center portion of the platform. A rocker board is sometimes referred to as a spoon board or a Hobie Board, after its designer, Hobie Alter. Considering the testimony of the witnesses as well as the admissions of Stevenson, who had manufactured rocker boards prior to his invention now under consideration, it is clearly established that rocker boards, exemplified by physical exhibit RX-13, are relevant prior art.
The flat skateboard, which has a flat platform, was acknowledged in the Stevenson patent specification as prior art.
Thus, on the record before us, the prior art includes,...
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