313 F.2d 115 (7th Cir. 1963), 13724, Stiffel Co. v. Sears, Roebuck & Co.

Docket Nº:13724, 13725.
Citation:313 F.2d 115, 136 U.S.P.Q. 292
Party Name:The STIFFEL COMPANY, Plaintiff-Appellant and Cross-Appellee, v. SEARS, ROEBUCK AND CO., Defendant-Appellee and Cross-Appellant.
Case Date:January 23, 1963
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit
 
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Page 115

313 F.2d 115 (7th Cir. 1963)

136 U.S.P.Q. 292

The STIFFEL COMPANY, Plaintiff-Appellant and Cross-Appellee,

v.

SEARS, ROEBUCK AND CO., Defendant-Appellee and Cross-Appellant.

Nos. 13724, 13725.

United States Court of Appeals, Seventh Circuit.

January 23, 1963

Rehearings Denied March 4, 1963.

Page 116

Warren C. Horton, Max R. Kraus and Marshall W. Sutker, Chicago, Ill., for Stiffel Co.

Will Freeman, D.D Allegretti, Frank H. Marks, Chicago, Ill., for Sears, Roebuck & Co.

Before HASTINGS, Chief Judge, and KNOCH and KILEY, Circuit Judges.

KILEY, Circuit Judge.

This is a patent infringement and unfair competition suit. Defendant answered that the patents in suit were invalid and that defendant was not guilty of unfair competition; and its counterclaim sought declaratory judgment accordingly. The District Court found the patents invalid, but found defendant guilty of unfair competition. From the judgment of these findings, each party has appealed.

The patents in suit are Stiffel Patent No. 2,793,286 and Stiffel Design Patent No. 180,251, both relating to floor to ceiling 'pole lamps.' The patents were issued to Theophile Stiffel in May, 1957, and subsequently were assigned to plaintiff. The lamp was first shown the public in 1956. Plaintiff learned from a Sears, Roebuck & Co. 1 catalogue in 1957 that pole lamps were being sold by Sears. It purchased a Sears lamp in Greensboro, North Carolina, and this suit followed. 2

The vital questions are upon the findings and conclusions with respect to patent invalidity and unfair competition. There is, however, a preliminary procedural question.

As part of the Sears proof, the court admitted in evidence Exhibit No. 55, a Deca pole lamp. Plaintiff contends the ruling was erroneous because Sears failed to give notice of the exhibit under 35 U.S.C. § 282. That section requires at least thirty days notice of patents and publications relied on as anticipating the patents in suit. However, the trial court may admit the proof, in the absence of

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notice, 'on such terms as the court requires.' The ruling on Exhibit No. 55 was within the court's discretion. C.S. Johnson Co. v. Stromberg, 242 F.2d 793, 797 (9th Cir. 1957), Thermo King Corp. v. White's Trucking Service, Inc., 292 F.2d 668 (5th Cir. 1961). We are not convinced, on the facts before the District Court, that plaintiff had no opportunity, because of the ruling, to present his case, as the Court of Appeals was convinced in Thermo King. We find no abuse of discretion and no error in the ruling.

The Stiffel pole lamp consists of a plurality of detachable tubular members, of small diameter, joined together to form a single pole longer than the distance between floor and ceiling of a room. It carries three lamps, 3 with swivel brackets, on the exterior of one of the sections. The lamps are served bu wires 'extending interiorly' 4 down through and out the lower section of the pole. In use it is supported between floor and ceiling under compression of a spring contained in the uppermost section. The upper and lower ends are small round felt or rubber covered discs to protect ceiling and floor. The lower disc is at the end of an adjustable leg for making fine adjustments to the length of the pole.

The District Court found that the Stiffel pole lamp was anticipated in the prior art more than one year prior to the Stiffel patent application in January. 1956, by Sears' public use and sale of the Deca pole lamp; and in printed publications. The question is whether the court erred in concluding, on these findings, that Stiffel Patent No. 2,793,286 is invalid. 5

The findings underlying the conclusion have substantial basis in the admitted use of the Deca poles by Sears in 1953 and 1954, and the evidence of their published illustrations, sketches and descriptions more than one year prior to the Stiffel patent application, H.W. Gossard Co. v. J.C. Penney Company, 304, F.2d 515, 518 (7th Cir. 1962), and were sufficient to overcome the presumption of validity of the patent. We hold the conclusion of invalidity of Patent No. 2,793,286 is not clearly erroneous.

The Deca pole included all the essential elements of the Stiffel pole except the adjustable leg. Instead of the adjustable leg, the Deca pole employed an equivalent, i.e., sections of various lengths for adjusting height. The court was not required to find on the evidence that the adjustable leg was novel or was functionally...

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