Iron Grip Barbell Company Inc vs USA Sports Inc

Facts:

This is a patent invalidation case that arose out of a patent

infringement case.

1. Iron Grip manufactured a weight plate with three elongated handle

openings for easier grasp. During its patent application, Iron Grip
disclosed the following prior art:
a) weight plates with one elongated grip (140 patent)
b) with two elongated grips (502 patent)
c) other prior art with four openings

After multiple rejections on the ground of obviousness, a patent (015

patent) was eventually issued covering their weight plates with three
elongated grips.

2. USA Sports Inc., a competing manufacturer also manufactured

three-grip weight plates. Iron Grip sued for infringement, while USA
Sports countered that 015 patent was invalid as obvious in light of
prior art. Both parties moved for summary judgment.

3. The district court initially ruled for Iron Grip, holding that finding
invalidity for obviousness required a suggestion, motivation or
teaching in the prior art to combine the elements from separate
references.

4. Later, upon motion for reconsideration, the district court reversed its
decision, invalidating the patent instead. It found that their previous
understanding of the law was unduly restrictive and and held that
the obviousness test calls upon the court to just simply exercise
common sense. Applying this new test, it would have been obvious to
a layman to combine the prior art.

Issue:
WON the patent is invalid on the ground of obviousness

Held:

YES, the patent is invalid on the ground of obviousness.

SUMMARY: When the court looked into the differences between the
claimed invention and the prior art, there is prima facie obviousness
because 015 patent of three grips falls within the range of the prior art
of one, two and four grips. Thus, the court looked into whether there is
objective evidence of nonobviousness to test this presumption. It
failed since there is no adequate proof of commercial success,
satisfaction of a long-felt need and copying of the claimed invention.
Thus, it was held invalid on the ground of obviousness.

FULL DISCUSSION:
In determining obviousness, we employ the four-part test set forth in
Graham vs John Deere which require the examination of the following:
1) scope and content of prior art
2) level of ordinary skill in the art
3) differences between the claimed invention and prior art
4) objective evidence of nonobviousness

Applying the test to the case at bar:

1) scope and content of prior art

Neither side disputes that the weight plates showing one, two and four
elongated openings were within prior art.

2) level of ordinary skill in the art

Neither party disputes that the proper level of ordinary skill in the art is
that of a layman.
Hence, the only points of contention in the obviousness inquiry/test are
the last two steps.

3) differences between the claimed invention and prior art

In this point of inquiry, it is important to be mindful against hindsight

bias, which is reading into the prior art teachings of the invention in
issue. The district courts use of an overall picture and common
sense test of obviousness falls squarely within the hindsight trap.
Where an invention is contended to be obvious based upon a
combination of elements across different references, there must be a
suggestion, motivation or teaching to those skilled in the art. This
requirement prevents the use of of the inventors disclosure as
blueprint for piecing together the prior art to defeat patentability - the
essence of hindsight.

In this case however, the obviousness does not arise from the
combination of elements but because the patent in issue falls within
the range of the prior art containing one, two and four grip handles.
Where the prior art discloses a range and the claimed invention falls
within that range, there is a presumption of obviousness. This
presumption is rebutted only if: 1) the prior art taught away from the
invention and 2) there are new and unexpected results relative to the
prior art.

In the case at bar, the range was not disclosed in just one prior art but
in multiple prior art references. Under the circumstances of the case
however, this distinction does not make any difference. The prior art
suggested that a larger number of elongated grips are beneficial. The
patent in issue has three grips, which falls within the range of the prior
art - one, two and four grips. There was no proof introduced that there
was a sufficient teaching away; the patent application merely
contained a broad statement the prior art.. taught towards fewer
grips. Second, there was no showing that the three grips led to
unexpected results. There was no explanation as to prove the
advantage of a three grip weight plate as compared to grips with one,
two or four grips.

Because the claimed invention falls within a range disclosed in prior

art, and the patentee has not shown that the prior art taught away
from the invention or that it yielded new unexpected results, the
claims are obvious absent substantial evidence of pertinent secondary
factors supporting patentability (this refers to the next, step/inquiry 4).

4) the objective evidence of nonobviousness

In determining questions of demonstrated obviousness, resort can be

made to objective evidence of obviousness. For instance, the court
has held that the following secondary factors are relevant indications
of nonobviousness: commercial success (of the patent in issue),
satisfaction of a long-felt need and copying . An applicant for instance,
may prove that the invention covered by a patent in issue has been
commercially successful. Iron Grip only showed evidence of 6
competitors manufacturing the same invention, three of which have
entered into a license agreement for the 015 patent. However, while
licenses may be presented as evidence of nonobviousness, only little
weight is attributed if the patentee does not show merits of the
invention and the licenses of record especially when it is a prima facie
case of obviousness.

Iron Grip argues that before it filed for the 015 patent, there were no
three grip plates in the market but it did not present evidence of long-
felt need or the failure of others (other plates). Without showing of
long felt need or failure of others, the mere passage of time absent the
claimed invention is not evidence of nonobviousness.

Iron Grip argues that USA Sports act of copying their invention
manifests nonobviousness. While copying is a relevant consideration,
not every competing product is evidence of copying otherwise every
infringement suit will confirm nonobviousness. There has to be proof
of the copying of a specific product, such as internal documents
showing that an invention prototype was disassembled, or using a
photograph of the invention as a blueprint to replicate, etc. The only
proof that Iron grip offered is that USA Sports stopped manufacturing
one grip plates but later moved on to three grip plates.

Since Iron Grip failed to present evidence of commercial success,

satisfaction of a long-felt need or copying, it can be concluded that
there is no objective evidence to rebut the strong showing of
obviousness based on prior art.