Three-Grip Weight Plate Was Obvious
December 14, 2004
Last Month at the Federal Circuit - January 2005
Judges: Dyk (author), Newman, and Archer
In Iron Grip Barbell Co. v. USA Sports, Inc., No. 04-1149 (Fed. Cir. Dec. 14, 2004), the Federal Circuit affirmed a finding of invalidity of several claims of U.S. Patent No. 6,436,015 (“the ‘015 patent”) based on obviousness.
Iron Grip Barbell Company, Inc. (“Iron Grip”) manufactures barbell weight plates and owns the ‘015 patent, which discloses a weight plate with three elongated openings near the periphery of the plate that function effectively as handles. The prior art includes weight plates with one, two, and four openings.
USA Sports, Inc. (“USA Sports”) also manufactures a three-grip weight plate. After Iron Grip sued USA Sports, a district court judge found the ‘015 patent invalid for obviousness on SJ.
In comparing the prior art to the claimed invention, the Federal Circuit warned of the dangers of a hindsight bias in determining obviousness. However, the Court noted that the key feature of the ‘015 patent—the fact that there are three elongated handles—falls squarely within a range disclosed by the prior art. Where the prior art discloses a range encompassing a somewhat narrower claim range, the Court concluded, the narrower range may be obvious; indeed, there is a presumption of obviousness. That presumption will be rebutted if it can be shown that the prior art taught away from the claimed invention or that there were new and unexpected results relative to the prior art. Here, there was no showing of either mitigating factor. Although Iron Grip had entered into three license agreements with respect to the ‘015 patent, two of those licenses were taken in settlement of litigation. The Federal Circuit explained that because it may be cheaper to take licenses than to defend infringement suits, evidence of commercial success, as presented by a license, is given little weight if the patentee does not demonstrate a nexus between the merits of the invention and the licenses. Here, there was no evidence of such a nexus; hence, the licenses were given little significance.