Universal Athletic Sales Co. v. American Gym
`
`203
`
`192 USPQ
`[19] In the discussion of obviousness "in
`ri8] In construing section-102, the trial
`Part III-A, we observed that it would be dif­
`judge apparently viewed
`the Loprinzi
`ficult, if not impossible, to discern the-con­
`photograph as a "primed publication"
`tent of the Loprinzi photograph. That
`which described the Zinkin invention. While
`observation is a
`"
`"
`"
`pplicable here, for it would
`neither this Court nor apparently any other
`not be possible for a trial court to ascertain
`tribunal has yet determined whether a
`photograph in itself constitutes a "primed whether the photograph anticipates the
`publication," we believe that a photograph Zinkin
`invention. The photographic
`may so qualify for purposes of section 102."
`representation of the Loprinzi "super-duper
`In so stating, we reaffirm our pragmatic pressing apparatus" hardly is "full, clear,
`pronouncement in Philips Electronic and
`and exact." It is questionable whether one
`Pharmaceutical Industries Corp. v. Ther-
`skilled in the design of weight-lifting ap-
`mal and Electronics Industries, Inc.,'6 that paratus could produce the Zinkin device,
`"to restrict our interpretation of section based on an examination of the Loprinzi
`102(a)'s 'printed' publication requirement photograph. Accordingly,
`the magazine
`solely to the traditional printing press would photograph is insufficient to render the pat-
`ignore the realities of the scientific and ent invalid on the ground of anticipation,
`technological period in which we live
`[20] Nor can we hold that the Simmons
`* * *"4> With a photograph, one conver- patent anticipated the Zinkin weight-lifting
`sant in a pertinent art could make or con- machine. It is unclear whether the Simmons
`struct a purported invention without resor-
`invention encompasses all or substantially
`ting either to the patent or to his own inven-
`all of the elements of the apparatus under
`tive skills. Under cenain circumstances,
`scrutiny in this case. The evidence sub-
`then, a photograph may so anticipate a pat- mitted does not reveal whether one skilled in
`ent as to render it invalid.
`the design of body-exercising devices, or
`The question remains, however, whether
`even in mechanical engineering, could
`photograph of Loprinzi.'s device an-., develop the Zinkin weight-lifting apparatus
`the
`ticipated those claims of the Zinkin patent
`based on the Simmons patent or on his own
`that the defendants challenge. We hold that
`skills. We conclude, therefore, that the
`it does not. In Philips we specified the cir- defendants in the present case have failed to
`cumstances under V/nich a prior publication demonstrate .invalidity of the challenged
`could anticipate a patent: "For a prior claims under section 102.
`publication to be sufficient to defeat a patent
`TV.
`it must exhibit a substantial representation
`of the invention in such full, clear, and exact
`While the validity of the Zinkin patent is
`terms that one skilled in the art may make,
`not completely free from doubt, we do not
`construct and practice the invention without
`accept the decision reached by the district
`having to depend on either the patent or on
`court. The district court erred in according
`>H8
`his own inventive skills.
`substantial weight to the testimony of Mr.
`Lyle. Without such unjustified reliance on
`that testimony, the trial judge could not
`properly interpret the p nor an. Because the
`evidence produced by the defendants simply
`is not sufficient to rebut the presumption of
`validity accorded patents, we must reverse
`the rulings of the district court as to ob-
`viousness and anticipation, and sustain
`laims numbered 3 and 4 of the Zinkin pat-
`.
`'
`
`•» Several courts have held that a drawing unac
`companied by verbal description may constitute a
`description in a printed publication within the
`meaning of section 102. See, e.g., Des Hosiers v.
`Ford iVfotor Co., 143 F.2d 907, 911-12, 62 USPQ
`320, 323-324 (1st Cir. 1944); In re Eager, 47 F.2d
`953, 953, 8 USPQ 484, 486-487 (C.C.P.A. 1931).
`A photograph may disclose an invention as well
`as, it not better than a drawing and, consequent-
`ly, is a "printed publication" For purposes of the
`statute.
`-
`44 450 F.2d 1164, 171 USPQ 641 (3d Cir.
`1971).
`" Id. at 1170, 171 USFO at 645-646.'
`" Id. at 1169, 171 USPQ at 644-645. For
`similar statements of the "anticipation" stand­
`ard, see Eam« v. Andrews, J 22 U.S. 40, 66
`(1886); Seymour v. Osborne, 78 U.S. 516,
`555
`(1970); Rich Products Corporation v.
`Mitchell Foods, 357 F.2d 176, 180, 148 USPQ
`522, 524-525 (2d-Cir.), cert, denied 385 U.S.
`821, 151 USPQ 757 (3966); Application of Le-
`Crice. 301 F.2d 929, 936, 133 USPQ 365,
`371-372 (C.CP.A. 1962); Deller's Walker on
`Patents §60 (2d ed. 1964).
`
`'
`e •t'
`The judgment of the district court will be
`vacated and the cause remanded for
`proceedings consistent with this opinion.
`
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`192 USPQ
`
`urt substantially
`tningfui opinions
`icxperience in
`The trial judge
`as to the level of
`.Ttinenr art was
`icated, he should
`he challenged pat-
`
`not consider the
`:riteria mandated
`inations of ob-
`•nvinced that the
`rovide adequate
`.tion of the Zinkin
`Even if the per-
`1, the commercial
`hine'2 would rein-
`/ould the "failure
`afety hazards and
`of the traditional
`is, we cannot say
`; so obvious as to
`
`he Zinkin claims
`Jistrict court con-
`ticipated by prior
`ides, in pertinent
`ntitled to a patent
`• * *
`ntion was
`a printed publica-
`ountry, before the
`splicant for patent
`ad contended, and
`lat both the Sim-
`prinzi photograph
`ims so as to render
`he statute. Since
`:nce to rebut the
`ent validity, we do
`on of the district
`
`7 USPQ at 106-107.
`•essly recognized the
`Zinkin chest press
`is fact in its analysis
`
`all inconsistent with
`laccutical Industries
`:ctronics Industries,
`Q 641 (J 971). There
`al judge's findings as
`) be evaluated under
`dard of Fed. R. Civ.
`IT, the requisite find-
`learly erroneous, as
`e to support them,
`fusion as to invalidi-
`
`4
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`Sawai Ex 1005
`Page 3532 of 4322
`
`

`

`Exhibit I
`Exhibit |
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`Sawai Ex 1005
`
`Page 3533 of 4322
`
`Sawai Ex 1005
`Page 3533 of 4322
`
`

`

`230 USPQ
`
`Wick v. Zindler
`
`241
`
`parent interest in continuing the '436 reexa-
`Review by Commissioner of Patents, sua
`sponte, of question whether decision ordering mination proceeding. As no other indication of
`reexamination should be vacated in view of
`interest is present nor any overriding public
`consent decree in related litigation. Reexamin- policy issue is involved, the decision ordering
`ation vacated..
`reexamination in Control No. 90/000,436 is
`vacated without prejudice as to any other party
`Michael A. O'Neil, and Gardere & Wynne,
`filing a request for reexamination based on
`both of Dallas, Tex!, for patent owner.
`some or all the prior art before the court. As
`the decision vacating the reexamination order
`Louis J. Virelli, J. Walter Schlipp, and Paul
`is equivalent, for fee purposes, to an initial
`. & Paul, all of Philadelphia, Pa., for
`denial of reexamination, a refund of $1,200
`requester.
`will be made to requester.
`Tegtmeyer, Assistant Commissioner for
`Patents.
`
`CONCLUSION
`
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`DECISION VACATING
`REEXAMINATION PROCEEDING
`
`The above noted reexamination proceeding
`is before the Office of the Assistant Commis­
`sioner for Patents for a determination, sua
`sponte, of whether the decision ordering reexa­
`mination should be vacated in view of a CON-
`SENT DECREE AND PERMANENT IN­
`JUNCTION filed February 28, 1984, by the
`court in related litigation in the U.S. District
`Court for the Middle District of Pennsylvania
`styled Ag-Bag Corp. v. American Bag All
`Corp. et al, Civil Action No. CV-83-0374.
`The court held that claims 1-35 (all claims of
`the patent) are valid and enforceable against
`the Defendant-Requester American Bag All
`Corporation and the other Defendants.
`
`DISCUSSION
`
`[1] The general policy of the Office is that it
`will act in harmony with the courts and will
`not "relitigate" in a reexamination proceeding
`an issue of patentability which has been re­
`solved by a federal court on the merits. See In
`re Pearre et al, 212 USPQ, 466 (Com'r. Pat.
`1981). While a consent decree is not a decision
`on the merits pursuant to consideration by the
`court of the prior art, a consent decree is a
`"decision on the merits" as to the parties of the
`litigation. Absent any overriding issue for. the
`Commissioner to continue the reexamination
`proceeding, it is appropriate that the reexa­
`mination proceeding be vacated when a con­
`sent judgment affecung all of the claims of the
`patent is ordered by the court against the
`reexamination requester. Accordingly, further
`action in the '436 reexamination proceeding
`will be in accordance with the decision set
`forth below.
`
`•; -''S. . f
`
`DECISION
`
`(2] In view of the consent decree issued by
`the court, the parties no longer have any ap-
`
`%
`
`Reexamination proceeding Control No.
`90/000,436 is vacated and a refund of $1,200
`of the filing fee is ordered. The reexamination
`file will be returned to the Director of Exam­
`ining Group 240 for action not inconsistent
`with this decision.
`
`Patent and Trademark'Office
`Board of Patent Interferences
`
`Wick v. Zindler, et al.
`No. 100,191
`Decided January-5,1984
`Released February 10,1986
`
`PATENTS
`1. Interference — Reduction to practice —
`In general (§41.751)
`
`.
`
`Patentability — Substitution of equiv­
`alents (§51.65)
`Interference party's argument that pivoted
`shoe clutch is equivalent to sliding shoe clutch
`is inapplicable, since doctrine of equivalence
`does not apply in interference proceedings, nor
`is argument valu| that pivoted shoe clutch is
`simple invention which did not need to be
`tested for reduction to practice, since clutch
`and brake mechanism intended to be. used.on
`lawn mower is not type of rare invention that
`can be reduced
`to practice by mere
`construction,
`2. Attorneys — Propriety of conduct
`(§17.7)
`Testimony by interference party's counsel,
`who identified certain documents that inventor
`used to explain invention during conferences
`with him, as to when conferences occurred.
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`Sawai Ex 1005
`Page 3534 of 4322
`
`

`

`242
`
`Wick v. Zindler
`
`230 USPQ
`
`and that invention was then explained to, and
`understood by him, is entitled to sufficient
`weight to corroborate conception.
`Clutches and
`
`Particular patents
`Brakes
`Zindler and Follow, application, awarded
`priority against Wick, in counts 4 and 5, and
`Wick, Patent No. 4,044,533, awarded priority
`against Zindler and Follow, in counts 6 and 7.
`
`Patent interference No. 100,191, between
`Gerald H. Wick, Patent No. 4,044,533, filed
`May 27,1976, Serial No. 690,632, and Hugh
`... Zindler, and Sheldon D. Follow, applica­
`A«
`tion, Serial No. 654,214, filed February 2,
`1976. Priority in subject matter in counts 4
`and S awarded to party Zindler, and priority
`of invention of subject matter in counts 6 and 7
`awarded to party Wick.
`
`Robert E. Clemency, Gerrit D. Foster, Bayard
`H. Michael, Paul R. Puerner, Josepn A.
`Gemignani, Andrew O. Riteris, Glenn A.
`Buse, and John L. Beard, all of Milwaukee,.
`Wis., for party Wick.
`
`Elwin A. Andrus, Merl E. Sceales, Glenn O.
`Starke, Eugene R. Sawall, Guenther W.
`Holtz, Frank S.
`Andrus, Daniel D. Fetter-
`ley, and George H. Solveson, all of Milwau­
`kee, Wis., for party Zindler.
`
`Before Calvert, Urynowicz and Boler, Exam­
`iners of Interferences.
`
`Boler, Examiner of Interferences.
`
`This interference involves a patent to Wick
`assigned to the Outboard Marine Corporation
`(Outboard) and an unassigned application of
`Zindler et al. (Zindler). The application that
`matured into the Wick patent was filed on
`May 27, 1976. The senior party Zindler file
`his involved application on February 2,1976,
`and he relies on that date for a reduction to
`practice of all of the counts in issue.
`The subject matter involved concerns a
`dutch and brake mechanism. The only counts
`in issue are counts 4 through 7 which corre­
`spond exactly todaims 15,16,19 and 20 of the
`Wick patent and to claims 19,20,22 and 23 of
`the Zindler application. Counts 4 and 6 de­
`pend from count 1 which is no longer an issue
`in the interference since the claim in the
`Zindler application corresponding thereto was
`held to be unpatentable to Zindler by the
`primary examiner during the motion period.
`Dissolved count 1 corresponds exactly to claim
`U of the Wick patent. Counts 4 and 6 are
`
`reproduced below along with'dissolved counl I
`from which they depend:
`[Coun* /
`A combined brake and clutch mechanism
`comprising a drive member mounted for
`rotation and. including thereon a'clutch
`drum, a driven member carried for rotation
`coaxialiy with and relative to said drive
`member, a clutch shoe connected to said
`driven member for common rotation there­
`with and for movement relative to a position
`of engagement with said clutch drum, bias­
`ing means for urging said clutch shoe to­
`ward said position of engagement, a brake
`surface fixed to said dutch shoe, and a brake
`member movable between a first position
`wherein said brake member is spaced from
`said brake surface, and a second position
`$ said
`wherein said brake member engage
`brake rotation of said driven member and to
`displace said clutch shoe from .said position
`of engagement against the action of said
`biasing means.)
`Count 4
`A combined brake and clutch mechanism
`in accordance with count 1 wherein said
`clutch shoe is conneaed to said driven mem­
`ber for pivotal movement relative to said
`driven member.
`Count 6
`A combined brake and clutch mechanism
`in. accordance with count 1 wherein said
`clutch drum is located radially outwardly of
`said dutch shoe and extends in generally
`parallel relation to the axis of drive shaft
`rotation and wherein said brake surface is
`located radially outwardly of and in gener­
`ally parallel relation to said dutch drum.
`Both parties subnytted evidentiary records,
`filed briefs and appeared for oral argument at
`the final hearing.
`
`Wick's Motion to Strike
`
`On pages 26 through 28 of his main brief,
`Wick has renewed several motions to strike
`first raised on the record of the depositions
`taken by Zindler. Wick moved to strike all of
`the testimony of Holtz, and objected to ZX 115
`to 119, on the ground that Holtz should not be
`permitted to serve both as counsel for Zindler
`and as a witness on his behalf. This motion is
`denied for the reasons given hereinafter in
`discussing Zindlcr's case for conception.
`Wick also moved to strike answers to lead­
`ing questions on various noted pages of the
`Zindler record. Many of the questions objected
`to on this ground were rephrased and not
`objected to as rephrased. To the extent that
`some of the questions may be considered lead­
`ing, the motion to strike the answers thereto is
`
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`Sawai Ex 1005
`Page 3535 of 4322
`
`

`

`230 USPQ
`
`Wick v. Zindler
`
`243
`
`Zindler's Motion Under
`37 CFR 1.287(d) (1)
`
`A motion by Zindler to rely on certain
`documents not timely served on Wick was
`deferi'ed to final hearing (Paper No. 55).
`Zindler's date for service under 37 CFR
`1.287(a)(1) expired on February 8, 1982. On
`February 11,1982, Zindler measured some of
`the components of Wick's Exhibit 64-B and,'
`thereafter, made some calculations regarding'
`the ability of the clutch to kill the engine on the
`lawn mower used in Wick's alleged reduction
`
`denied; however, Wick's arguments have been
`taken into consideration in assessing the
`weight to which they are entitled.
`Wick moved to strike testimony on certain
`pages of the Zindler record as being irrelevant.
`This motion is denied because the testimony
`related either to Zindler's conception or to his
`attempt to show that the Wick device relied
`upon for a reduction to practice had not been,
`adequately tested. Both of these areas of inqui­
`ry we're relevant to issues involved in this
`interference.
`Wide* .on certain
`tal{en on March 2 1982. The documents pre-
`pages of the Zindler record as being offered
`d by 2ind,er as a rcsu|t 0f thc measure-
`without compliance with proper procedure.
`This motion is granted as to the testimony menls and calculations were not served on
`vVick until direct examination of Zindler was
`regarding exhibits ZX 110 through 114 which
`were not
`timely served under 37 CFR
`neariy complete (ZR 52-53). The documents
`1.287(a)(1). Zindler stated in his brief that he
`involved are ZX 110 through 114. We deny
`does not rely on ZX 120 or 121 or the testimo-
`the motion because 37 CFR 1.287(d)(1) re-
`ny relating thereto for any purpose. Thus, this
`quires that the motion be filed "promptly",
`motion is deemed moot as to the testimony' and Zindler has failed to show why the docu­
`ments could not have been served at least
`regarding those exhibits. ZX 107 is clearly a
`several days prior to his deposition thereby
`copy of a portion of ZX 101 and the original
`allowing Wick, an opportunity to prepare for
`objection to ZX 107 as not having been served
`cross-examination.
`under 37 CFR 1.287(a)(1) was withdrawn at
`ZR 26. The motion is denied as to the testimo­
`ny regarding ZX 107, 109 and 115 through
`119 since copies of all of these exhibits except
`Since the application that matured into
`ZX 107 were properly served and Wick'is
`Wick's patent was copending with the Zindler
`deemed to have waived any objection he may
`application, the junior party, Wick, has the
`have had as to the latter exhibit.'
`- burden of proving his case for priority by a
`• Wick further objects to the authentidcy of
`preponderance of the evidence. Peeler u. Mill­
`ZX 109 and to the manner in' which ZX 122
`er, 535 F.2d 647, 190 USPQ 117 (CCPA
`and WX 74-A were admitted. Holtz received
`1976).
`ZX 109 from Zindler at least by February 27,
`The record submitted by Wick consists of
`1975, and thus Holtz established its authentic­
`depositions-of the inventor Gerald Wick, of
`ity as of that date. Wick appears to contend
`Theodore Holtermann, of Gerald Haft, and of
`that the exhibit has not been shown to be
`Gerald Betts, together with assodated exhib­
`authentic because it has not been established
`its. Exhibit 1 of the Wick record is a stipula­
`that it was drawn by Follow (who did not
`tion between the parties as to the authenticity
`testify). Zindler said that Follow showed him a
`of certain of the exhibits introduced by Wick.
`copy of ZX 109 before Zindler made ZX 101.
`Wick discloses two embodiments in his ap-
`He assumed Follow made ZX 109, but he did
`plication. The first embodiment is illustrated
`not see Follow make it. For the purpose of this
`jn Figures 2 and 3 arid comprises clutch shoes
`interference, it does not make any difTerence
`31 which are slidingly connected .to the driven
`. whether ZX 109 was drawn by Follow or member 41. The other embodiment is Ulus-
`some unknown third party since third party
`trated in Figures 4 and 5 and comprises clutch
`inventorship is not ancillary to priority,
`shoes 31 pivotally connected to the driven
`Skeffner v. Calloy 515 F.2d 1169, 185 USPQ
`member. Counts 6 and 7 are generic to both
`726 (CCPA 1975). Wick introduced ZX 122
`embodiments, but counts 4 and 5 are limited to
`into evidence during cross-examination of a mechanism wherein the clutch shoes are
`Holtz and is considered to have waived any
`pivotally mounted to the driven member,
`objection to the entry thereof. WX 74-A 'was
`identified during Wick's testimony and is
`deemed to be properly in the record even
`though not formally ofTered. Cunn u. Bosch,
`181 USPQ 758 (Bd.Pat.Int.1973).
`
`Wick's Cate For Priority
`
`Counts 6 and 7
`
`' Wick made a drawing (WX 2) of a clutch
`and brake mechanism meeting the terms of
`
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`Sawai Ex 1005
`Page 3536 of 4322
`
`

`

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`244
`
`Wick v. Zindler
`
`230 USPQ
`
`some other obstruction, the lawn mower en-
`counts 6 and 7 sometime prior to June 10,
`gine used in the September tests would over-
`1975. The drawing was seen and understood
`power the dutch and cause it to slip with the
`by Haft and Holtermann by June 10, 1975.
`result that the clutch could overheat and be
`We find, and Zindler does not contend other­
`destroyed in a short period of time. Zindler's
`wise, that Wick has established conception of
`testimony was based on calculations set forth
`the subject matter in counts 6 and 7 by June
`10,1975.
`in ZX110 through 114. We have not accorded
`these exhibits or Zindler's testimony with re­
`After receiving a copy of WX 2, Haft as­
`use the exhibits
`signed Holtermann the job of building a clutch
`spect thereto any weight beca
`and brake mechanism in accordance with the were not timelv served under 37 CFR
`drawing for use on a lawn mower. Hoker-
`1.287(a)(1), and we hereinabove denied
`mann constructed a device which is in evidence Zindler's motion under 37 CFR 1.287(d)(1) to
`•as WX 64-B. The mechanism is illustrated in have the late service of copies of ZX 110
`WX 37 and is labelled Type 2. Many of the
`through 114 excused. Holtermann testified
`Wide exhibits are drawings made by Betts
`that the problem alluded to by Zindler did not
`under the supervision of Hohermann. Betts
`arise during the testing of WX 64-B, but he
`testified that he drew the portion of WX 37 was of the view that if it did occur the operator
`relating to the Type 2 mechanism on or before would realize that the blade was not turning
`July 14, 197S. This mechanism has sliding within 10 or 15 seconds and release the clutch
`clutch shoes and was mounted on the lawn
`before any damage would occur thereto (WR
`mower shown in WX 59 through 66. The 242-243). Moreover, Holtermann testified
`mechanism was tested at Outboard's fadlities
`that the lawn mower was tested under load by
`in Milwaukee pnor to September 15, 1975, pushing it into heavy grass and weeds before
`icked
`where Holtermann and Haft were employed,
`engaging the clutch and that the dutch p
`and further tested at Lawn-Boy Engineering up the blade to cut the grass as intended (WX
`(Lawn-Boy) in Galesburg, Illinois, where 107-108, 242). In our view, the testimony of
`Wick was employed, on September 25, 1975. Holtermann and Haft is dear and definite to
`the effect that the WX 64-B dutch and brake
`Lawn-Boy is a part of Outboard.
`mechanism successfully performed its intend­
`The mechanism as installed on the lawn
`ed function in September 1975 and their testi­
`mower was arranged so that the brake' was
`mony is sufficient to corroborate an actual
`normally spring biased into engagement there­
`reduction to practice on behalf of Wick at that
`by normally maintaining the blade stationary
`time with respect to the subject matter in
`during operation of the engine. A linkage
`counts 6 and /. The case cited by Zindler,
`(deadman control) under the control of the
`Konet v. Haskms, 179 F.2d 1003, 84 USPQ
`operator could be actuated to release the brake
`461 (CCPA 1950) is not controlling here for in
`and engage the clutch to drive the blade. Hol­
`that case the Court said that the testimony of
`termann and Haft testified that the lawn mow­
`grass in Septem-
`the witness was "too indefinite, both as to the
`er was used to cut weeds and
`1»iade stationary
`parts of the instrument, their relationship in-
`ber 1975. The brake held the
`except when the operator purposely released
`side the instrument, as to just how such parts
`it, and the clutch picked up the blade when the were functioning, to constitute satisfactory
`brake was released. Both considered the tests
`proof of reduction to practice."
`to be successful, but indicated that-there was
`The evidence relied upon by Zindler for his
`some dissatisfaction with the noise on engage-
`contention that the sliding shoe mechanism
`ment and disengagement (WR 107-108, 204-
`(WX 64-B) was merely.an abandoned experi­
`205).
`ment consists of a letter (WX 21) from Mr.
`Zindler concedes that counts 6 and 7 read on
`Comstock, house counsel for Outboard, to Mr.
`the mechanism tested on behalf of Wick in
`Clemency, outside counsel, Wick's notes (WX
`September 1975, but he contends that the
`29) regarding some testing which took place in
`testing was inadequate to establish an actual
`March 1976, and a memo (WX 30) from
`reduction to practice; that the opinion testimo­
`Holtermann to Wick in March 1976, together
`ny of Holtermann and Haft six years after the
`with the fact that shortly after the September
`tests is insuffident to prove that they were
`tests Holtermann started working on a pivoted
`successful; and the fact that Holtermann start­
`shoe arrangement. In WX 21, dated Novem­
`ed working on the pivoted shoe embodiment
`ber 21, 1975, Comstock noted that he had sent
`shortly after the September tests supports
`Clemency a drawing of the sliding shoe em­
`Zindler's contention that the September tests
`bodiment on October 13, 1975 and then stated
`were nothing but an abandoned experiment.
`that, "(wje apparently had some difficulty
`with this design and have now gone to a
`Zindler relies on his own testimony as well
`pivoted shoe arrangement as shown at the top
`as that of Holtermann to the effect that in the
`left of (WX 37J. This arrangement (top left) is
`drcumstance where the blade could not turn,
`now our preferred form of this invention." In
`for example, due a plugged discharge chute or
`
`I
`
`- • -Vi.
`
`Sawai Ex 1005
`Page 3537 of 4322
`
`

`

`230 USPQ
`
`Wick v. Zindler
`
`245
`
`not the rare type of invention that can be
`WX 29, dated March 10, 1976, Wick stated
`reduced to practice by mere construction. Since
`with respect to the testing in early March
`1976, "[tjhe sliding shoe type was noisy both Wick did not test the pivoted shoe dutch prior
`engaged and unengaged. We did not use this
`to March 1,1976, he has failed to establish an
`dutch very much. In WX 30, dated March
`actual reduction to practice of the subject mat-
`12, 1976, Holtermann stated, "(ejnclosed are
`ter in counts 4 and 5 prior to Zindler's filing
`layouts and details of... the 'Wick' centrifu-
`date. Elmore v. Schmilt, 278 F.2d 510, 125
`USPQ 653 (CCPA 1960).
`gal dutches which should be sufficient to allow
`you to develop cost figures." Holtermann then
`It is not clear from the record when Wick
`went on to state that the Type I clutch had
`first became aware of the fact that Holtermann
`been built as shown, and that the shoulder
`was working on the pivoted shoe clutch, but
`bolts shown on the Type 3 clutch had been
`the earliest date which we could possibly find
`replaced with welded-in solid pins. Both the
`for conception by Wick of the pivoted shoe
`Type 1 and 3 dutches have pivotal shoes. Since
`dutch would be late October 1975 when Betts
`the Type 2 clutch was not spedfically men*
`drew the views labelled Type 1 and 3 on WX
`tioned in WX 30, Zindler concludes that it had
`37 under Holtermann direction-
`(WR
`been abandoned by then. On the other hand,
`227-228). We need not consider Wick's case
`Holtermann testified that the term "clutches"
`for conception coupled with diligence as to
`in the second line of the memo included both
`counts 4 and 5 because we hold hereinafter -
`types of dutches (WR 114).
`that Zindler was the first to conceive as wdi as
`The evidence relied upon by Zindler does
`the first to reduce to practice by filing with
`not show that Wick abandoned the sliding shoe
`respect to those counts.
`. embodiment but merely indicates that the pi­
`voted shoe form was preferred. Comstock did
`riot testify, therefore, the "difficulty" men­
`tioned in WX 21 has not been explained but
`there is nothing in the record to indicate that
`he was referring to anything other than the
`noise generated by the operation of WX 64-B,
`which was referred to in the testimony of
`Wick, Haft and Holtermann. The sliding shoe
`mechanism was tested in September 1975,
`again in March 1976, and was illustrated and
`described in the Wick patent application filed
`in May 1976. This conduct by Wick is not
`consistent with Zindler's theory that the Sep-,
`tember tests were abandoned experiments.
`Accordingly, we hold that Wick has estab­
`lished that he conceived and reduced to prac­
`tice the invention in counts 6 and 7 by Septem­
`ber 25, 1975.
`
`Zindler's Case for Conception
`
`The record submitted by Zindler consists of
`the deposition of one of the inventors, Hugh A.
`Zindler, and of his patent attorney Guenther
`W. Holtz, along with several documentary
`exhibits. Sheldon D. Follow, the other inven­
`tor, did not testify.
`Zindler made a drawing (ZX 101) In De­
`cember 1974 and took it to his patent attorney
`in January of 1975. Additional drawings (ZX
`102, 103 and 104) and a written description
`(ZX 105) were taken by Zindler to his patent
`attorney in February 1975. Zindler read the
`counts element for element on ZX 101 and 102
`and wrote legends on ZX 107 designating the
`various elements. Zindler testified that he had
`known Follow for a number of years prior to
`the invention; that Follow came to him in the
`fall of 1974 to discuss a problem in the design
`of a dutch and brake mechanism; that since
`they lived twenty miles' from each other they
`worked independently on the problem after
`discussing a number of possible solutions; and
`that Follow showed him a copy of the drawing
`in evidence as ZX 109 before Zindler made
`ZX 101.
`Holtz corroborated Zindler's testimony to
`the effect that he received a copy of ZX 101 in
`January 1975 and recdved copies of ZX 102,
`103, 104 and 105 in February 1975. Holtz
`said he also recdved a copy of 2X 109 but he
`was not sure whether he recdved it when he
`met with Zindler in January or February
`1975. He believes that he received it in Febru­
`ary 1975 because the invention was logged into
`the firm records in January with Zindler lis.ted
`
`Counts 4 and 5
`
`Wick did not test a mechanism meeting the
`terms of counts 4 and 5 on a lawn mower until
`March 1976, that is, after Zindler's filing date
`of February 2, 1976. Wick argues that the
`pivoted shoe dutch is equivalent to the sliding
`shoe dutch; that a pivoted shoe clutch was
`assembled prior to Zindler's filing date; and
`that the pivoted shoe clutch is a simple inven­
`tion which did not need to be tested for a
`reduction to practice, particularly in view of
`the fact that die sliding shoe embodiment had
`already been successfully tested.
`[1] The doctrine of equivalence does not
`ai
`erence proceedings. Wetmore v.
`uickt 536 F.2d 937,190 USPQ 223 (CCPA
`1976). In our view, a dutch and brake mecha­
`nism intended to be used on a lawn mower is
`
`r h
`
`•;||
`
`H:
`{!:'
`
`I
`
`I
`
`•
`
`Sawai Ex 1005
`Page 3538 of 4322
`
`

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`246
`
`Wick v. Zindler
`
`230 USPQ
`
`as the inventor and that Follow would have
`also been listed as an inventor if Holtz then
`realized that the disclosure brought in by
`
`Wick's Request to Dissolve
`as to Counts 4 and 5
`
`„ WW.
`^ •»«* ^
`the firs; mv^or .of .the rsubJect
`in this case, but that he requested not to be
`™
`called to testify due to the £* that he was in «unSs 5 and 5' thc >n^rference should be
`poor health
`dissolved as to those counts because they, are
`[2] In our view, Holtz has adequately cor-
`n.ot Patentable over the prior an and in addi-
`roborated conception on the part of Zindler S<«;h«y ?re not patentable over counts 6 and
`and Follow as of at least February 27, 1975.
`7- The primary examner at one point m these
`Wick contends that the testimony of Holtz
`proceedings dissolved the interference as to
`should be given no weight because it is against
`counts 4 and 5 on the ground that Zindler s
`the canons of ethics of the American Bar
`claims corresponding thereto were not patent-
`Association and the Slate Bar of Wisconsin for
`able over the prior art Zindler requested re-
`an attorney to testify as a fact witness for a
`consideration, and the primary .examiner rein-
`stated counts 4 and 5 stating that h« found the
`client he is representing. However, whatever
`subject matter therein to be patentable to
`the ethical considerations may be, an attorney
`is competent to serve as a witness for or against Zindler over the