APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA D.C. Civil Nos. 73-248 and 73-698.
Rosenn and Hunter, Circuit Judges, and James A. Coolahan, District Judge.*fn*
Although the game of baseball has had its memorable innings with the law over the years,*fn1 this is apparently the first action in which bats rather than players have generated the litigation. The appellees, Aluminum Company of America and its subsidiary, Alcoa Sports Products Corporation (hereinafter referred to collectively as "Alcoa"), brought an action against Amerola Products Corporation ("Amerola") seeking a declaration of the invalidity, noninfringement, and unenforceability of Amerola's patent on a metal ball bat ("the Amerola patent").*fn2 The district court decided that the patent was obvious in view of the prior art, and therefore invalid under 35 U.S.C. § 103 (1970).*fn3 Aluminum Co. of America v. Amerola Products Corp., 408 F. Supp. 1352 (W.D. Pa. 1976). On this appeal, Amerola mounts several challenges to the district court's determination of obviousness. We affirm.
The patent in suit consists of six claims and pertains to a ball bat with certain physical characteristics. The first claim describes a bat comprising a seamless, elongated, hollow metal body having a substantially uniform weight per unit of length with sound-deadening means disposed in the larger, open end.*fn4 Claims 2 and 3 cover the bat disclosed in Claim 1, with the additional specifications that the metal is aluminum and the sound-deadening means is a "rubberous plug." The fourth claim describes the bat defined in the first, "wherein both ends are open and wherein sound-deadening means are disposed in both the free end portion and the handle portion"; Claim 5 covers the bat disclosed in Claim 4, with the further specification that the sound-deadening means consists of rubberous plugs. The sixth claim defines the bat in Claim 5 "wherein the rubberous plug at the handle portion of the body is disposed in spaced relation to the terminal end of the handle portion, and further comprising a handle member having a knobbed end portion . . . ."
In its inquiry into the obviousness vel non of the Amerola patent, the district court noted the Supreme Court's definitive interpretation of 35 U.S.C. § 103 in Graham v. John Deere Co., 383 U.S. 1, 15 L. Ed. 2d 545, 86 S. Ct. 684 (1966). Graham enumerated the factual inquiries that underlie the determination of obviousness. First, the scope and content of the prior art are to be discerned; second, the differences between the prior art and the claims at issue are to be ascertained; and third, the level of ordinary skill in the art must be resolved. In addition, the Supreme Court said, "such secondary considerations as 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." Id. at 17-18.
The district court in the instant case commenced its execution of the Graham analysis by identifying ten items of the most pertinent prior art. Those items included (1) "swaging," a well known method of forming metal tubing which results in substantially uniform weight per unit of length and increased wall thickness in the reduced diameter portion of the metal tube; (2) an Alcoa aluminum ball bat manufactured between 1934 and 1937 in which the hollow open ends were closed by mushroom-shaped metal plugs; (3) Carpenter aluminum softball and fungo bats, which were made by the process of swaging and consisted of a seamless, elongated, hollow metal body of substantially uniform weight per unit of length, with a free end portion of one diameter tapered to a handle portion of reduced diameter, the reduced diameter portion having a wall thickness greater than the wall thickness of the free end portion, and with the open ends being closed by mushroom-shaped metal plugs; (4) "Duke Alumabats," which were made by the process of spinning and consisted of a seamless, elongated, hollow metal body of substantially uniform weight per unit of length, with a free end portion of one diameter tapered to a handle portion of reduced diameter, the reduced diameter having a wall thickness greater than the free end portion, and with the open ends closed by mushroom-shaped metal plugs; (5) "end plugs" of all materials - wood, plastic, metal, and rubber - and of all shapes and sizes, used to close open ends of metal sporting products such as pool cues, ski poles, baseball bats, golf clubs, and pole vaulting poles; (6) a pool cue manufactured and sold by Amerola and its predecessors since at least 1966, consisting in part of a swaged aluminum tube fitted with a mushroom-shaped rubber and/or plastic plug in the handle portion of the cue; (7) certain printed publications describing the Carpenter bat; (8) the "Middlekauff patent," United States Letters Patent No. 1,611,868, which discloses a baseball bat made of seamless steel tubing tapered to a customary bat configuration, with the ends closed by caps that can be weighted to affect the balance characteristics of the bat; (9) the "Taylor, et al. patent," United States Letters Patent No. 2,340,156, which discloses a hollow aluminum ball bat, the open ends of which may be plugged by any suitable closure; and (10) the "Gilbert patent," United States Letters Patent No. 3,301,119, which discloses a drumstick made of swaged aluminum tubing with a wall thickness in the body of the tubing graduated to an increased thickness as the outside diameter of the shoulder portion is reduced, so that each unit section of the length of the drumstick body is of identical weight to any other unit section. 408 F. Supp. at 1355-56.
Having identified the most pertinent art, the district court proceeded to compare that art with the Amerola patent. The court observed that the process of swaging naturally results in a substantially uniform weight per unit of length and in increased wall thickness in the reduced diameter portion of the metal tube being worked; these characteristics of the Amerola bat, the court said, had been revealed in many sporting products made prior to the alleged invention, including, but not limited to, the Carpenter bat. The use of rubberous plugs as disclosed in Claim 3 of the Amerola patent was, according to the district court, not a significant development:
As the record indicates, the earlier ball bats had employed the use of metal plugs or caps where the [Amerola] bat . . . used rubberous plugs in the open ends. Plugs or caps, whether they be wood, plastic, metal, or rubber, have a natural dampening effect on sounds and vibrations. . . . Prior to the [Amerola patent] many metal sporting products had employed the use of rubberous plugs. Even the defendant, Amerola Products Corporation, and its predecessor, manufactured and sold an aluminum pool cue since at least 1966 which consisted in part of a swaged aluminum tube [fitted] with a mushroom rubber and/or plastic plug . . . .
408 F. Supp. at 1356-57. The district court concluded that the Amerola patent was merely a combination of known elements with no change in their respective functions, an aggregation demonstrating only mechanical skill, not invention, *fn5 and achieving no synergistic result. Therefore, the district court held, under the guidelines laid down in Graham v. John Deere Co., supra, and cases dealing with the obviousness of combination patents, e.g., Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 95 L. Ed. 162, 71 S. Ct. 127 (1952), the Amerola patent was invalid as being obvious to a person of ordinary skill in the art.
In the course of its opinion, the district court noted that "some of the most pertinent prior art relative to the . . . application" for the patent in suit was not considered by the Patent Office. 408 F. Supp. at 1354. Specifically, neither the Taylor, et al. patent, nor the Carpenter bat, nor the Duke Alumabat was cited by the patent examiner.*fn6 For this reason, the court determined that the statutory presumption of validity, 35 U.S.C. § 282 (1970), should not be accorded to the Amerola patent.
On this appeal, Amerola raises two basic issues. First, Amerola contends that the district court erred in holding that its patent was entitled to no presumption of validity. Second, Amerola asserts that the district court's "subjective" determination of obviousness is fatally undercut by evidence that when Alcoa produced a few metal bats in 1966, those bats were substantially identical to prior metal-plugged bats manufactured by Alcoa, Carpenter, and Duke. If the patented rubber-plugged bat was in fact obvious, ...