Robert Sarkisian v. Winn-Proof Corp., William A. Werner, and Wer-Nel Enterprises, Inc.

697 F.2d 1313, 1983 U.S. App. LEXIS 30876, 217 U.S.P.Q. (BNA) 702
CourtCourt of Appeals for the Ninth Circuit
DecidedFebruary 1, 1983
Docket78-3270, 78-3266
StatusPublished
Cited by11 cases

This text of 697 F.2d 1313 (Robert Sarkisian v. Winn-Proof Corp., William A. Werner, and Wer-Nel Enterprises, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Robert Sarkisian v. Winn-Proof Corp., William A. Werner, and Wer-Nel Enterprises, Inc., 697 F.2d 1313, 1983 U.S. App. LEXIS 30876, 217 U.S.P.Q. (BNA) 702 (9th Cir. 1983).

Opinion

ALARCON, Circuit Judge:

The original decision in this ease, which appeared at 662 F.2d 596 (9th Cir.1981), was withdrawn pending the Ninth Circuit’s en banc review of the question of the appropriate standard of patentability for mechanical combination patents. Three cases were consolidated in the en banc panel’s review: Sarkisian v. Winn-Proof Corp., 686 F.2d 671 (9th Cir.1981); Carson Mfg. Co., Inc. v. Carsonite International Corp., Inc., 658 F.2d 1306 (9th Cir.1981) and Hammerquist v. Clarke’s Sheet Metal, Inc., 658 F.2d 1319 (9th Cir.1981). In its decision, the en banc panel held that “a determination of an unusual or surprising result is a requisite to a finding of nonobviousness of a combination patent.” Sarkisian v. Winn-Proof Corp., 688 F.2d 647 at 651 (9th Cir.1982) (hereinafter “Sarkisian”). The en banc panel remanded the original Sarkisian opinion to us for determination, in accordance with the en bane decision, of whether Sarkisian’s device produced an unusual or surprising result. Sarkisian, supra, at 651.

INTRODUCTION

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 Patent No. 3,646,696 [“the ’696 patent”] valid and infringed. Appellee Robert Sarkisian cross-appeals from the court’s judgment finding United States Letters 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, Fig. 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 *1316 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.

STANDARD OF REVIEW

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.), cert. denied, 429 U.S. 896, 97 S.Ct. 258, 50 L.Ed.2d 179 (1976). The ultimate question of obviousness, however, is a question of law, and is therefore subject to our independent review. Sarkisian v. WinnProof Corp., 688 F.2d at 651.

ANALYSIS

35 U.S.C. § 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 § 103:

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 non-obviousness of the subject matter is determined.

383 U.S. 1 at 17, 86 S.Ct. 684 at 693, 15 L.Ed.2d 545.

Appellants acknowledge that the obviousness or non-obviousness of an invention under § 103, though ultimately a question of law, cannot be determined without strict adherence to those factual inquiries; more *1317 over, 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 unless they are clearly erroneous. Saf-Gard Products, Inc. v. Service Parts, Inc., 532 F.2d at 1272.

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697 F.2d 1313, 1983 U.S. App. LEXIS 30876, 217 U.S.P.Q. (BNA) 702, Counsel Stack Legal Research, https://law.counselstack.com/opinion/robert-sarkisian-v-winn-proof-corp-william-a-werner-and-wer-nel-ca9-1983.