Citations
- 546 F.2d 530
Full opinion text
OPINION OF THE COURT
ADAMS, Circuit Judge.
At issue in this case is the validity of a United States patent that pertains to a weight-lifting apparatus. Originally granted to Harold Zinkin, the patent was owned by Universal Athletic Sales Co. at the time of suit. The patent consists of eight claims, and the district court struck down two of them on grounds of anticipation and obviousness. We must decide whether these rulings were warranted.
Two issues underlie the basic question of patent validity now before the Court. The first concerns the controlling weight accorded by the trial judge to the testimony of defendants’ principal expert witness, an associate in the law firm representing two of the defendants. Assuming that such testimony deserved little or no weight, as plaintiff maintains, we must then decide the second issue, whether there was nonetheless evidence sufficient to support the decision of the district court. ,
I.
Modern technology has, of course, pervaded almost every province of human endeavor. The Zinkin patent demonstrates the verity of this postulate, for its deals with a somewhat unusual activity — weightlifting. Specifically, the patent relates to the chest-press exercise, one of the cornerstones of the bodily arts. As athletes and physical fitness enthusiasts well know, the chest press enables the zealous practitioner to develop the musculature of his upper torso. Like many modern advances, the Zinkin patent attempts to retain the advantages of old methods, while conferring added benefits with the new.
In the traditional chest press, the exerciser lies on a bench and raises a free barbell from his chest to a position in which his arms are fully extended. He raises and lowers the barbell for as long as he desires or is able. The exercise requires the continuing assistance of another person, the “spotter.” Not only must the spotter hand the barbell to the exerciser at the inception of the routine, but he must also attempt to retrieve the bar should it begin to totter. Occasionally, the spotter is unable to catch the barbell so that it falls upon the exerciser, causing injury that can be quite serious.
The patent in this appeal discloses an apparatus which permits an exerciser to simulate, safely and effectively, the chest press exercise. To use the patented apparatus, the exerciser lies upon a table in a supine position and pushes against handles in an upward movement. These handles shift in an arcuate fashion, analogous to the movement of the bar in the chest press exercise. They extend from a box-like structure which supports and contains the lifting mechanism. The design of the apparatus is such that the handles, the attached bar and the weights cannot strike the exerciser even should he falter. In addition, the Zinkin machine may be utilized without the assistance of a spotter. The patented apparatus thus eliminates the safety hazards posed by the conventional chest press and obviates its manpower requirements as well.
This action was initiated by Universal against the defendants as part of a complex litigation involving, inter alia, questions of patent infringement, unfair competition, copyright infringement and antitrust violations. When Universal alleged patent infringement in its complaint, the defendants pleaded invalidity of the patent itself. The district court severed the patent infringement and unfair competition issues for trial, and the patent issue, alone, is before us on appeal. After a nonjury trial, the district court initially adjudged the Zinkin patent entirely invalid. However, an amended order vacated the earlier judgment, leaving as invalid patent claims numbered 3 and 4.
Defendants had developed a body-exercising apparatus very similar to that covered by the Zinkin patent. Indeed, the district court found that “the defendants’ chest press apparatus would infringe the Zinkin patent if the Zinkin patent were not . . ” invalid. In their briefs, defendants list several differences between their own device and that of Zinkin. Nevertheless, the defendants do not vigorously contest the determination of infringement by the trial judge. Instead, they rely solely upon his ruling of invalidity, and attempt to buttress his analysis in this respect. At trial, as in the appeal now before us, the primary focus was on whether the Zinkin patent was “anticipated” or made “obvious” by the prior art.
Two references were relied upon by the district court in holding the Zinkin claims invalid: a patent issued to C. A. Simmons in 1871 and a magazine photograph, dated 1950, of a lifting machine designed by Sam Loprinzi. Disclosing a lifting machine for “developing the muscular system,” the Simmons device consists of weighted levers which the exerciser apparently lifts and lowers as part of the exercise. The Loprinzi machine is described in the photograph caption as a “super-duper pressing apparatus,” but the magazine caption itself provides no information as to the features of the device or how it was to be used. Defendants’ principal expert witness attempted to explain its features based solely on his examination of the photograph.
That expert was Firman Lyle, an associate lawyer in the law firm that represented several of the defendants. Controlling weight was given by the district court to his testimony as to obviousness and anticipation: “The court chooses to adopt the view of defendant’s expert Firman Lyle.” Relying on the Simmons patent, the Loprinzi photograph, and Mr. Lyle’s testimony as to these references, the trial court concluded that the two central claims of the Zinkin patent are void, since they were anticipated and made obvious by 'prior art.
For reasons to be discussed in this opinion, we have decided that the judgment of the district court must be vacated.
II.
For the district court to have granted controlling weight to the testimony of Mr. Lyle constituted error for two reasons. First, because Mr. Lyle’s qualifications as an expert are questionable, at least insofar as this litigation is concerned, the trial judge erred in according great weight to his opinions. Second, the district court committed error in failing to discount the value of the testimony, given the interest in the litigation of the law firm with which Mr. Lyle was associated.
A.
Universal first contends that Mr. «Lyle’s testimony should have been excluded on the ground that he was not an expert with respect to the patent claims at issue here.
This Court previously has delineated the standard which governs the competency of an expert witness in a particular case. As we noted in United States v. 60.14 Acres of Land, an expert witness “ ‘must have such skill, knowledge and experience in [the] field or calling as to make it appear that his opinion or inference will probably aid the trier in his search for truth.’ ” Ordinarily, the determination of competency of an expert witness rests within the discretion of the trial court. The Supreme Court has posited that “the trial judge has broad discretion in the matter of the admission or exclusion of expert evidence, and his action is to be sustained unless manifestly erroneous.” It follows that this Court will not interfere with the decision of the district judge as to an expert, absent an abuse of discretion.
In considering whether the trial judge should have recognized Mr. Lyle as an expert in this litigation, we must first determine which art is the pertinent one. Universal asserts that the relevant art is weight-training, whereas the defendants and the district court selected mechanical engineering. We doubt whether any mechanical engineer could provide meaningful opinions regarding the devices at issue here. For an engineer to assist the trial judge in his search for truth would require that he have at least some familiarity with bodybuilding machines. At the same time, a mere weight lifter probably would be of marginal assistance to a court in evaluating the design facets of exercise apparatus. Consequently, the art germane to the present case is the design of body-training devices.
Having selected the relevant art, we proceed to consider whether Mr. Lyle possessed the qualifications to be an expert in this case. It is apparent that he had little familiarity with the design of weight-lifting machines prior to the present litigation. The record reveals that Mr. Lyle did not undertake, even in connection with this law suit, any extensive study of technical references with respect to body-exercising apparatus. Rather, his examination was confined to the elements of prior art selected by defendants’ counsel, i. e., the Simmons patent and the Loprinzi photograph. As a result, it is doubtful whether he was suited to serve as an expert here.
Even assuming that the disciplines designated by the parties were the apposite ones, Mr. Lyle’s standing as an expert in this litigation still may be called into question. He had no expertise whatsoever in weight training, as he repeatedly conceded during the course of his testimony. It is also questionable whether Mr. Lyle possessed any skill or knowledge in the field of mechanical engineering. A recipient of a bachelor’s degree in electrical engineering, he had served for seven years as an examiner in the United States Patent Office and for thirty-five years as a patent attorney for Westinghouse. Although he did handle patent matters relating to turbines, motors and generators, which have mechanical features, his patent work primarily pertained to electrical engineering. Experience may vest one with the qualifications of an expert, but Mr. Lyle had only a limited background even in the province of mechanical engineering.
However, since Mr. Lyle may possess skill and knowledge greater than the average layman with respect to mechanical apparatus, we cannot find that the district court clearly abused its discretion in recognizing him as an expert. Nevertheless, coupled with the arguable deficiencies in his qualifications as an expert witness, Mr. Lyle’s limited experience with the class of devices present in this litigation should have substantially circumscribed the weight accorded his testimony. The trial court thus erred in attaching controlling weight to the opinions of defendants’ expert.
B.
Universal also challenges the expert testimony of Mr. Lyle, because of the conflict between his association with defense counsel and his role as an expert witness. Over the objection of Universal, the district court permitted Mr. Lyle to testify as an expert.
Ordinarily it is inappropriate for an attorney, or a lawyer in his firm, to testify on behalf of a client. Rules DR 5 — 101 and 102 of the Code of Professional Responsibility provide that a lawyer shall refuse employment or withdraw as counsel if the “lawyer learns or it is obvious that he or a lawyer in his firm ought to be called as a witness on behalf of his client. . . . ”
Under such circumstances, the attorney, or his firm, must decide whether to serve either as advocate or as a witness in a particular case. Recognizing that “the role of an advocate and of a witness are inconsistent . ,” the Code would appear to preclude the testimony of Mr. Lyle here. As the disciplinary rules logically apply to expert as well as lay witnesses, the law firm should have withdrawn once it decided that its associate would testify, or else the firm should have found another expert.
Even though the Code inveighs against the participation of a witness in a position comparable to that of Mr. Lyle, it does not necessarily follow that any alleged professional misconduct on his part would in itself render his testimony, once it was adduced, a nullity. This is so because the Code does not delineate rules of evidence but only sets forth strictures on attorney conduct. Moreover, it is well settled that a lawyer is competent to testify on behalf of his client. Of course, such testimony may subject the attorney to separate disciplinary action. Thus, while we do not approve of the practice of an attorney testifying as an expert witness for a client of his law firm, certainly in the absence of some necessity for such testimony, we cannot say that the district court committed error solely by not extirpating that testimony. In so concluding, we are in accord with the courts of appeals in several other circuits.
In the case at hand, however, the district court did err when it relied so heavily, on the testimony of Mr. Lyle. In Lau Ah Yew v. Dulles, the Ninth Circuit, after criticizing the practice of an attorney testifying as a lay witness for his client, declared the testimony competent. But the court noted that the relationship of such a witness to his client detrimentally affected the weight to be accorded his testimony and therefore “discounted” its value. Such an approach, which would appear to be equally applicable to attorneys who serve as experts for their clients, also reflects our view. We believe that, while a district court may in limited circumstances receive the testimony of a lawyer-witness, the value of such testimony must be discounted because of the interest of the lawyer or his firm in the outcome of the litigation.
Here, there is little indication that the district judge, as the sole trier of fact, scrutinized the expert testimony of Mr. Lyle with the proper circumspection. It is one thing for a trial court to give the testimony of an interested witness some weight in reaching a decision. But it is quite another to permit the presumption of patent validity to be rebutted by primary reliance on the testimony of that witness. Even if, in the context of this case, it was not error to permit Mr. Lyle to testify, we conclude that the district court erred when it placed controlling weight, as to patent validity, on the opinions of a lawyer associated with defense counsel.
III.
Because the district court gave undue weight to the testimony of Mr. Lyle, we must consider whether the remaining evidence in the record is sufficient to sustain the ruling that the patent claims are invalid.
It is a fundamental canon governing judicial consideration in this field that a presumption of validity attaches to patents issued by the United States Patent Office. Not only has a unanimous Supreme Court noted that “patentees are heavily favored as a class of litigants by the patent statute,” but this court has stated on several occasions that the burden of proving patent invalidity is a heavy one. Moreover, such invalidity must be demonstrated by “clear and convincing proof.” In the case at bar, the evidence as to invalidity, once the testimony of Mr. Lyle is discounted, consists of only two items — the Simmons patent and the magazine photograph of Loprinzi’s “super-duper pressing apparatus.” This evidence in itself is not adequate to rebut the presumptive validity of the Zinkin patent, or to sustain the lower court’s rulings as to obviousness and anticipation.
A.
We now turn to the ruling of the district court on the issue of obviousness. Although the trial judge invoked the proper authorities and standards in his consideration of this question, we believe that he erred in applying them to the Zinkin claims.
Inasmuch as this Court has adumbrated the precepts of obviousness on previous occasions, we need not do so here. Instead, we enunciate only the analytical framework necessary for this case. Simply stated, a patent may be deemed invalid if it is “obvious.” 35 U.S.C. § 103 provides, in part: “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 the subject matter pertains.”
As observed in Trio Process Corporation v. L. Goldstein’s Sons, Inc., the most authoritative construction of section 103 appears in Graham v. John Deere Co. There the Supreme Court established three mandatory criteria with which to frame judicial determinations as to obviousness: “The scope and content of the prior art .; differences between prior art and the claims at issue . . .; and the level of ordinary skill in the pertinent art . ,” The Supreme Court also set forth several permissive, or “secondary,” considerations: “commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” This past term the Supreme Court continued to apply these criteria, thereby indicating the enduring vitality of Graham While the district court, in the present case, specifically considered the three mandatory tests, it erred in its evaluations under these requirements, largely because of the dearth of evidence submitted by the defendants.
In analyzing the “scope and content”