159 F.2d 159 (3rd Cir. 1947), 9151, Cusano v. Kotler

Docket Nº:9151.
Citation:159 F.2d 159, 72 U.S.P.Q. 62
Party Name:CUSANO v. KOTLER.
Case Date:January 07, 1947
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit
 
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159 F.2d 159 (3rd Cir. 1947)

72 U.S.P.Q. 62

CUSANO

v.

KOTLER.

No. 9151.

United States Court of Appeals, Third Circuit.

January 7, 1947

Argued Dec. 2, 1946.

Maxwell E. Sparrow, of New York City (Hodes & Hodes, of Newark, N.J., on the brief), for appellant.

Luther W. Hawley, of New York City (Samuel J. Davidson, of Hoboken, N.J., and Philip S. McLean, of New York City, on the brief), for appellee.

Before GOODRICH, McLAUGHLIN and KALODNER, Circuit Judges.

GOODRICH, Circuit Judge.

Plaintiff sued the defendant in the District Court for the District of New Jersey for violation of his patent Number 2, 312, 882. The only question before that Court and before us is the validity of the patent because the defendant does not deny that if the patent is valid he has infringed it. The District Court found in favor of validity and gave judgment for plaintiff. The defendant appeals.

The subject-matter of the plaintiff's patent is a game table for playing a game more nearly like shuffleboard than any other, although it has some of the features of the once popular crokinole and carom. The standard shuffleboard is an old game, of course, and no one could claim a patent upon it now. The trouble with shuffleboard as a popular game is that it requires a space of such length as to make it unavailable in most homes and in places of public entertainment where space is limited. The plaintiff conceived the notion of combining some of the features of the shuffleboard with some of those of the billiard table and produced a game board which was short enough to go into a fair sized room without monopolizing all of the space there. The product of the patent generally measures ten feet in length, although there is noting in the specifications to prevent its either being made larger or smaller.

The plaintiff's device has one end of the playing surface enclosed by cushions on three sides. These cushions operate as a rebounding medium, the same way as the cushions on a billiard table operate. The opposite end may be called the playing

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end, and there the playing surface is surrounded by gutters in the same fashion as a shuffleboard. The scoring space is at this playing end. If this description is clear 1 it is apparent that game like regular shuffleboard can be played except that the disc gets into the scoring area by rebound from the cushions instead of by direct application of force from the player. It is also apparent that the game board device can be used equally well to play a three cushion modification of shuffleboard comparable to a three cushion version of billiards. It is likewise clear that the plaintiff's table is equally capable of being used for tenpins, or any modification of that game, with equal appropriateness and that the games can be played either with discs or with balls. This, in summary, is a list of the technical facts. Their simplicity is a happy novelty in patent litigation.

To this it may be added that there was a showing of what seems to us, for this sort of apparatus, a pretty good record of commercial success. The defendant's imitation carries sincerity of flattery to its ultimate limit, even to the extent of calling his table 'National' while the plaintiff's is called 'American'. Lastly, the history of the plaintiff's application in the patent office shows a modification of the original claims in an effort, successful in the eyes of the examiner, to avoid anticipation by previously granted patents in this field.

Was the trial judge right in sustaining the plaintiff's patent? He found invention. Invention is supposed to be a question of fact, 2 though the fact finding by the patent office and the trial court is seemingly not taken with compelling seriousness by appellate courts in considering patent cases. 3

We think there is support for the conclusion reached by the District Court in upholding the patent. One fact is too clear to discuss: shuffleboards and billiard tables are in the public domain. 4 Defendant makes

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the plausible argument that all the plaintiff has done is to take a piece of each of these old contrivances and put them together. The two together, he says, do not make a patentable device since neither one separately would be, arguing that the whole is not greater than the sum total of its parts. 5

The argument has its elements of persuasiveness, but we do not think it is to be applied here. We think the plaintiff's table has offered a contribution to the game playing art, and it is an art, 6 that is new and different. The facilities offered by this table are not a form of billiards and certainly, if shuffleboard, a highly modified form of shuffleboard. We cannot ask anyone to produce an entirely new kind of game for we think a few basic ideas underlie most of them. 7 But the plaintiff's

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invention did provide for playing something different from what existed before and, therefore, he can properly be found to have invented something. 8

What the plaintiff invented will not have a very startling effect on the...

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