Cusano v. Kotler

• Decision Date: 07 January 1947
• Docket Number: No. 9151.,9151.
• Parties: CUSANO v. KOTLER.
• Court: U.S. Court of Appeals — Third Circuit

159 F.2d 159 (1947)

CUSANO v. KOTLER.

No. 9151.

Circuit Court of Appeals, Third Circuit.

Argued December 2, 1946.

Decided January 7, 1947.

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 nothing 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 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 clear¹ it is apparent that a 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 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 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 history of the continents or the arts and sciences. Indeed, at the argument we felt reluctant to bring the authority of the judicial process into the decision of controversies between rival traders in this field. This reluctance arose out of a doubt as to whether or not Cusano's patent met the statutory requirement that an invention be "useful".⁹ A study of the cases reveals that the legal significance of "useful" in the patent statute differs from the general conversational connotation of the word. Justice Story, as early as 1817, when charging a jury, commented as follows: "* * * All that the law requires is, that the invention should not be frivilous or injurious to the well-being, good policy, or sound morals of society. The word `useful,' therefore, is incorporated into the act in contradistinction to mischievous or immoral. For instance, a new invention to poison people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention. But if the invention steers wide of these objections, whether it be more or less useful is a circumstance very material to the interests of the patentee, but of no importance to the public. If it be not extensively useful, it will silently sink into contempt and disregard. * * *"¹⁰ Because of the cultural and prophylactic importance of games in our social structure, and the additional relevant factor of the huge annual expenditure for recreation¹¹ we can properly conclude that the creation of a new game conforms to the patent requirement of being useful.¹²

The defendant, as is usual in patent cases, has brought to our attention a number of prior patents upon which he relies to show that the plaintiff's patent was anticipated by previous inventors. The Trial Judge made an express finding on the anticipation point, denying anticipation.¹³ We recognize that there are some common elements in these patents and that of the plaintiff. Pool and billiards, likewise hockey and soccer, have common elements; yet no one would say that they are alike.

As stated, the six patents, cited by the appellant, have common features with Cusano's, but do not, we think, anticipate it. Discussing them in chronological order we have first the Malinowski patent, No. 497,452 of 1893. The Cusano and Malinowski patents have the same thread of thought in their common use of the basic idea of the billiard table. Malinowski, however, did not alter the table at all. He merely provided a three sided, inclined receptacle to place upon a billiard table. Billiard balls would be propelled into this in an attempt to place them in scoring indentations in the receptacle. The Loyer patent, No. 695,572, of 1902 is remotely related to the Cusano patent in that it also adopted some elements of the billiard table design. Loyer's table, however, was designed so that a modified game of pin-ball was played with cue sticks, billiard balls and pins. The Calaluca patent, No. 1,971,295, of 1934 had a single similar feature in that it too was dedicated to modifying the billiard or pool table. Here the similarity ends, for the patent was upon an extention attachment for the purpose of converting the billiard or pool table into a miniature bowling alley. The Maxwell patent, No. 2,005,660, of 1935 is related to the Cusano patent by both tables making use of the gutter device. But on Maxwell's inclined game board one rolls balls into pockets at the far end of the table, and the gutters are "for return to the player of the balls when they fail to enter pockets * * *". The British patent, No. 508,270, dated 1938 resembles Cusano's patent in that discs are part of the playing equipment and rebounding sides are used. The British board is constructed so that discs may be shot into pockets around the table, not at a flat scoring area at the delivery end of the table. The Swenson patent, No. 2,155,912, of 1939 is the most recent challenge to Cusano. It presents a board upon which a modified type of shuffleboard can be played. The Swenson design, however, did not anticipate Cusano's resilient sides and scoring area upon merely a marked surface at the delivery end of the apparatus. The Swenson scoring area was not produced by pockets or a lined surface, but by stalls into which the discs must go.

We find, therefore, that the evidence sustains the District Judge's conclusion as to invention and his conclusion, likewise, as to want of...