406 F.2d 275 (2nd Cir. 1969), 171, Rains v. Niaqua, Inc.

Docket Nº:171, 32602.
Citation:406 F.2d 275, 160 U.S.P.Q. 370
Party Name:John K. RAINS, Plaintiff-Appellant, v. NIAQUA, INC., Defendant-Appellee.
Case Date:January 13, 1969
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit
 
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Page 275

406 F.2d 275 (2nd Cir. 1969)

160 U.S.P.Q. 370

John K. RAINS, Plaintiff-Appellant,

v.

NIAQUA, INC., Defendant-Appellee.

No. 171, 32602.

United States Court of Appeals, Second Circuit.

January 13, 1969

Argued Nov. 12, 1968.

Edwin T. Bean, Buffalo, N.Y. (Bean, Brooks, Buckley & Bean, Buffalo, N.Y., on the brief), for defendant-appellee.

Before FRIENDLY, SMITH and FEINBERG, Circuit Judges.

FEINBERG, Circuit Judge:

Plaintiff John K. Rains appeals from an adverse judgment in his patent infringement action against defendant Niaqua, Inc. after a trial before Chief Judge John O. Henderson in the United States District Court for the Western District of New York. Plaintiff is the owner of design patent No. Des. 201,793 for a swimming pool. Chief Judge Henderson held the patent invalid and not infringed. Because we believe that the former conclusion was not erroneous, we affirm.

I.

The design patent in suit was applied for in April 1963, and issued in August 1965. It deals with the appearance of an above ground, as distinguished from an inground or excavated, swimming pool. In practice, pools utilizing plaintiff's design have been made from redwood with

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a vinyl liner holding the water. Plaintiff's design is simple and attractive; most probably the latter quality is due to the former. The patent itself merely claims the 'ornamental design for a swimming pool, as shown and described' in twelve accompanying figures. Figure 1 of the patent is as follows:

(FIGURE OMITTED)

As indicated, the design shows a rectangular structure apparently resting on a smaller rectangle. Around the top of the pool is a deck or walkway supported by vertical studs, which also help to support the sides of the pool, and by diagonal or inclined struts extending between the outer edge of the deck and the base of the pool. The vertical studs and inclined struts come together at and rest on the extended base, and together with the bottom of the deck they form inverted right triangles that appear at even intervals around the pool. The studs and struts are connected by plywood panels (gussets), which close most of the triangular space between them. A ladder along one of the sides provides access to the deck. And finally, the entire deck is enclosed by a fence made from crisscross slats and vertical posts.

With a design patent it is the appeal to the eye-- the appearance of the design-- that is crucial. See Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637, 641 (2d Cir. 1958). Nevertheless, design patents are generally governed by the same principles that apply to other patents. See, e.g., Hygienic Specialties Co. v. H. G. Salzman, Inc., 302 F.2d 614 (2d Cir. 1962); Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694 (2d Cir. 1961). Thus, 35 U.S.C. § 171 states:

Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

The provisions of this title relating to patents for inventions shall apply

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to patents for designs, except as otherwise provided.

Under this section, a patentable design must be both ornamental and novel, the latter a requirement that it meet the general standards of novelty of 35 U.S.C. § 102. Similarly applicable to design as well as other patents is the command of 35 U.S.C. § 103:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Plaintiff claims that his swimming pool design meets the statutory requirements of ornamentality, novelty, and nonobviousness. He argues that his design is unique in several respects, discussed below, that it met a long felt need in the industry and consequently has enjoyed considerable commercial success, and that defendant failed to offer evidence sufficient to overcome the presumption of 35 U.S.C. § 282 that the patent is valid. 1

II.

The district court held that plaintiff's design patent was invalid under section 103; 2 in the light of the existing prior art, the court found that the design would have been obvious to a person having ordinary skill in the relevant art. The prior art relied upon by the district court and argued here most strongly by defendant was introduced in the course of cross-examination of plaintiff. It includes a photograph of a swimming pool, two United States design...

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