Winner Intern. Royalty Corp. v. Wang, Civil Action No. 96-2107.

• Decision Date: 12 June 1998
• Docket Number: Civil Action No. 96-2107.
• Citation: 11 F.Supp.2d 18
• Parties: WINNER INTERNATIONAL ROYALTY CORPORATION, Plaintiff, v. Ching-Rong WANG, Defendant.
• Court: U.S. District Court — District of Columbia

11 F.Supp.2d 18

WINNER INTERNATIONAL ROYALTY CORPORATION, Plaintiff, v. Ching-Rong WANG, Defendant.

Civil Action No. 96-2107.

United States District Court, District of Columbia.

June 12, 1998.

Charles Lewis Gholz, Oblon, Spivak, McClelland, Maier & Neustadt, Arlington, VA, Kenneth A. Lapatine, New York City, Adam D. Cole, Tarrytown, NY, for Winner International Royalty Corporation.

Charles Randolph Wolfe, Richard E. Fichter, Charles Randolph Wolfe, Bacon & Thomas, Alexandria, VA, for Ching Rong Wang.

Charles Lewis Gholz, Oblon, Spivak, McClelland, Maier & Neustadt, Arlington, VA, for Winner International Royalty Corporation.

MEMORANDUM OPINION

SPORKIN, District Judge.

This matter comes before the Court on review of the Patent and Trademark Office Board of Patent Appeals and Interferences decision on the patentability of Plaintiff's invention, an automobile anti-theft device commonly known as the "Super or Ultra Club." Wang v. Wu, Interference No. 102,654 (July 19, 1996). In 1991, an administrative law judge of the Patent and Trademark Office ruled that all of the claims (1 through 4) to Plaintiff's patent and claims 9-11 of the related patent application were invalid on their face in light of other patents and devices in existence at the time of the invention. On July 19, 1996, the Board of Patent Appeals issued a split opinion reversing in part and affirming in part that decision: with regard to very specific components mentioned in claims 1 and 3 of Plaintiff's patent, the Board reversed and found valid grounds for the issuance of a patent. Yet on the broader claims 2 and 4 of the patent and claims 9-11 of the related patent application, the Board affirmed the lower decision and found Plaintiff's device to be invalid and unpatentable.

On appeal to this Court, Plaintiff contends that the Board erred as to claims 2 and 4, and 9-11, while Defendant contends that the Board erred as to claims 1 and 3. In essence, Plaintiff asks this Court to affirm and reverse in part the Board's decision and to hold its device patentable in its entirety. The Defendant asks this Court to do exactly the opposite: affirm and reverse in part the Board's decision and to hold Plaintiff's device unpatentable and invalid in its entirety. This Court heard the matter without a jury from May 7, 1998 to May 13, 1998, May 27, 1998 and on June 1, 1998.

BACKGROUND

Plaintiff, the Winner International Royalty Company ("Winner"), is a Delaware corporation with its principal place of business in Sharon, Pennsylvania. Winner is the distributer and patent holder of the original steering wheel anti-theft device known as the "Club", United States Patent No. 4,738,127 ("127 or Johnson Patent"). The Club has two telescoping rods with hooks at each end to attach to the steering wheel. It operates by having one of the rods extend well beyond its hook portion such that when in place, it prevents full rotation of the steering wheel. To lock in place, the Club employs a dead-bolt style locking mechanism, requiring a key to allow the telescoping rod to be moved in place.

In 1988, Jinn F. Wu, the Taiwanese manufacturer of the original Club, developed another steering wheel anti-theft device, now known as the "Ultra or Super Club." The Ultra Club operates in much the same way as the original Club, with two rods hooking at each end to mount on the steering wheel. In contrast to the Club's dead-bolt locking mechanism, however, the Ultra Club employs a ratcheting mechanism that allows for the telescoping rods to be extended and locked in place without the use of a key. While it is undisputed that the dead-bolt locking mechanism of the Club is more tamper-resistant, and thus more secure, than the spring loaded ratcheting mechanism of the Ultra Club, the self locking feature of the Ultra Club is more convenient and user-friendly to the consumer. Wu received a patent for this new device, United States Patent No. 4,935,047 ("`047 Patent"), which he in turn assigned to the Plaintiff Winner International. The '047 Patent is the patent at issue in this case.¹

The Defendant, Ching-Rong Wang ("Wang"), is a Taiwanese national who resides in Taiwan, the Republic of China. Wang also received a patent, United States Patent No. 4, 887,443 ("`443 Patent"), for a steering wheel anti-theft device which looks and works very much like the Ultra Club. Wang owns a company in Taiwan which manufactures the device, known as the "Gorilla Grip," and he distributes it in the United States through its exclusive distributer, Amcor Industries.

In the fall of 1991, it came to the attention of the Patent and Trademark Office that there existed two competing patents on essentially the same device. An interference was declared, and Administrative Patent Judge John Martin conducted the proceeding to determine which of the two patents had priority over the other. At some point in the proceeding, Defendant Wang chose not to pursue his own patent, but instead moved to hold both his and Plaintiff Wu's competing patent invalid and facially unpatentable. Under 35 U.S.C. § 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 having ordinary skill in the art to which said subject matter pertains." Given the other automobile anti-theft device patents in existence at the time that also disclosed use of a ratcheting lock, Wang asserted under 35 U.S.C. § 103 that each of the claims in Wu's '047 Patent was "obvious" in light of the prior art and thus unpatentable. In essence, Wang argued that the concept of a "Club" with a self-locking feature was unpatentable, and thus anyone in the public domain had the right to manufacture such a device without fear of patent infringement. In that way, Wang could protect the sale of the Gorilla Grip even if he lost his right to the '443 patent.

Judge Martin rejected the specific prior art references cited by Wang, but nonetheless found Wu's claims to be facially obvious in light of the other prior art references disclosed by both parties in their patent applications. In his opinion, Judge Martin found Wu's '047 patent to be obvious over the original Club patent (the Johnson '127) in view of United States Patent No. 3,462,982 ("`982 or Moore Patent"), Published Taiwan Patent of Addition Application No. 74,210,699 ("`699 or Wu Roc Patent"), and the Published French Patent Application No. 2,566,398 ("`398 or Grimaldi Patent").

The Moore Patent discloses a Y shaped steering wheel lock which uses a ratcheting mechanism requiring a key for removal, but not installation. The two legs of the Y have immovable hook-shaped clamps for engaging the steering wheel. The third leg, or base, of the Y has teeth along the edges of the leg and a movable clamp which rides on the teeth. The movable clamp works by using a spring-loaded ratcheting lock mechanism to permit the clamp to be moved into place on the steering wheel without use of a key. Patented in 1969, the Moore Patent was mentioned as prior art not only in the Wu '047 Patent application, but also in the original Johnson '127 Patent.

The Wu Roc Patent discloses a "versatile locking core" that can employ either a dead-bolt lock or a ratcheting lock for use in the lock housing of a key operated automobile anti-theft device. The invention is described for the use and convenience of the manufacturer, who, with the patent blueprint, can manufacture either lock for an anti-theft device with minimal cost for change of parts. Since the patent is essentially for the dual locking feature, it fails to describe the rest of the anti-theft device, or indicate where the device would be placed in the car. The inventor of this patent is the same Wu listed on the '047 Patent now in contention. This "Wu Roc" Patent was issued a year after the Johnson Patent and two years prior to the Wu '047 Patent.

The Grimaldi Patent discloses a number of automobile anti-theft devices which lock the clutch or brake pedal against the floor board of the car. The devices disclosed in the patent use a ratcheting style mechanism to lock the devices in place. A circular rod is mounted to the floorboard and has a series of identical circumferential grooves, each of which has an annular, vertical, surface, and a sloping (i.e. frusto-concial) surface separated by a cylindrical outer surface. The arm of the clutch or brake pedal is held against the floorboard by a movable, key-operated locking frame, which includes a spring-biased locking pin for ratcheting engagement with the grooves on the rod. The spring loaded locking bolt in this patent is contained, for added security purposes, within a "blind bore," which is a bore formed with a single opening that opens into the passage that carries the locking rod, and is thus blocked by the rod when it is in place.

In sum, Judge Martin reasoned that one of ordinary skill in the art would have been able to combine the teachings of these other patents along with the Johnson '127 Patent to easily figure out a way to change the dead-bolt mechanism of the Johnson Patent to a ratcheting lock. On this point, Judge Martin stated that "an artisan (a) would have been aware of the ratcheting-type steering wheel locks disclosed in Moore and Wu Roc, (b) would have considered Johnson's dead bolt-type locking device to be disadvantageous compared to the Moore and Wu Roc devices in that it requires a key for installation, and thus (c) would have been motivated to make Johnson easier to use, albeit less secure, by replacing his dead bolt mechanism with a suitable ratcheting mechanism." Bd. at 65.

With this set of assumptions in mind, Judge Martin found that it would have been facially obvious to an ordinary artisan to modify the Johnson Patent to produce the '047 device. The judge analyzed that one of ordinary skill in the art would have...