462 F.2d 1265 (3rd Cir. 1972), 19068, Hadco Products, Inc. v. Walter Kidde & Co.

Docket Nº:19068.
Citation:462 F.2d 1265, 174 U.S.P.Q. 358
Case Date:June 16, 1972
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit

Page 1265

462 F.2d 1265 (3rd Cir. 1972)

174 U.S.P.Q. 358




No. 19068.

United States Court of Appeals, Third Circuit.

June 16, 1972

Argued April 2, 1971.

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Henry N. Paul, Jr., Paul & Paul, Philadelphia, Pa., for appellee.

Before FORMAN, SEITZ and ALDISERT, Circuit Judges.


FORMAN, Circuit Judge.

This is an appeal from the judgment of the United States District Court for the Eastern District of Pennsylvania of May 5, 1970 adjudging Design Patent

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199,143 valid and infringed 1 by the appellant, Walter Kidde & Company, Inc. (Kidde). 2 The patent was issued to Howard A. Daum, who assigned it to the appellee, Hadco Products, Inc., (Hadco) a Pennsylvania corporation.

The patent in question is for a lighting fixture or lantern represented to be of Old English style, and advertised and sold as the "Tudor" by Hadco. It consists of a base, a cage, a roof, a vent cap, and a finial as shown in the reproduction of the patent appended hereto.

The cage rests on a concavely-shaped cylindrical base, and forms a regular hexagon, which becomes wider as it ascends from the base to the roof. The roof in turn carries out the hexagonal design of the cage, curving inward and upward from the cage. Placed over the roof, the vent cap follows the inwardly curving silhouette of the roof and is also hexagonal. The bottom of both the roof and the vent cap flare out horizontally in a scalloped design topped with small triangular accents. The flared portion of the roof overhangs the cage as the equivalent portion of the vent cap overhangs the roof. In addition, the roof is decorated with six simulated ventilators, which are curved to its silhouette. At the top of the vent cap, a spike-shaped finial is set on a round, concave base.

This lighting fixture was conceived and designed by the patentee, Howard A. Daum, early in 1962, and appeared on the market through Hadco in August of that year. On April 25, 1963, he filed an application for a design patent. The application was amended three times 3 to make some changes and additions in the design, and a patent was issued by the Patent Office on September 15, 1964. It is conceded that the patent issued with several technical errors of draftsmanship. 4 Kidde began to sell the fixtures held to infringe the Daum patent in February of 1964.

All of the constituent parts of the Hadco lighting fixture are old and well known in the trade. Hadco concedes that the lantern is composed of a combination of elements commonly known and extensively used in the prior art. It argues, however, that the particular combination embodied in the "Tudor" design creates an unusual and aesthetically pleasing visual impression which is lacking in the prior art and discloses the lighting fixture as a novel work of creativity and inventiveness. Along this line, Hadco contends that the lantern fulfilled a long-felt but unsatisfied need for such a fixture in the industry. Here, as in the District Court, Hadco relies heavily on public acceptance of the lighting

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fixture, evidenced by the alleged great commercial success it has enjoyed, as proof of its originality, novelty and fulfillment of a long-felt need.

At the outset it is noted that the applicable standard of review in patent infringement cases is ordinarily the "clearly erroneous" test mandated by F. R.Civ.P. 52(a). 5 An exception to this rule occurs where the evidence is purely documentary in nature, or where the court actually views the object or device in operation. 6 Kidde here introduced documentary evidence of the state of the prior art and thus contends that this case falls within the above exception. The record clearly shows, however, the introduction of a substantial quantity of oral testimony and physical exhibits in addition to such documents, upon which the District Judge relied, and upon which both parties rely on this appeal. In such circumstances, where findings rest "upon a blending of documentary evidence and oral testimony," the clearly erroneous test is the appropriate standard of review. 7

On the other hand, the ultimate question of patent validity, including a determination of the obviousness or nonobviousness of the subject matter of a patent, is not subject to the limitations on review under Rule 52(a). Although resting on a factual background, "the question of validity of a patent is a question of law" 8 reviewable free of the clearly erroneous test.

The District Judge found the patent valid over Kidde's defenses of obviousness, insufficient and indefinite disclosure of the design, addition of new matter, failure to file a supplemental oath, acquisition of intervening rights, double patenting and late claiming. 9 Except for the last two-mentioned objections, Kidde repeats the same contentions here, and urges that if the standard of patentability applied by the District Judge was proper, then that standard is unconstitutional.

Provision for the patentability of designs is found in 35 U.S.C. § 171, which 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 to patents for designs, except as otherwise provided."

One of these requirements is set out in 35 U.S.C. § 103, which provides:

"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."

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This court has held that a design, to be patentable, must be new, original, ornamental and nonobvious to a worker of ordinary skill in the art to which the design pertains. 10 And, in determining the validity of a design patent, it is the appearance of the article taken as a whole which must meet the statutory requirements since it is "the appearance itself . . . that constitutes . . . the contribution to the public which the law deems worthy of recompense." 11 Beyond this, the law which governs patents does not differ from that generally applicable to other types of inventions. 12

In Graham v. John Deere Co., 13 the Supreme Court discussed the method of judicial application under § 103, stating that:

"Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. 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. As indicia of obviousness or nonobviousness, these inquiries may have relevancy." 14

With the addition of § 103 to the Patent Act of 1952, the Congress expressed its intent to shift judicial focus in determining the validity of patents by "emphasiz[ing] 'nonobviousness' as the operative test of the section, rather than the less definite 'invention' language" 15 previously utilized by the courts, which had led to a considerable divergence in decisions.

Under this approach, it is clear that mere distinctions between the design and the prior art are insufficient to warrant a patent. Thus, even where the subject matter of a patent may be different from and unlike the prior art, or "new and pleasing enough to catch the trade," it may not be patentable. 16 Under § 103 it must be determined that the differences between the prior art and the subject matter of the patent are nonobvious to a worker of ordinary skill to justify the issuance of a patent. The courts are bound to a "strict observance" of this rigorous standard. 17

Where, as in the present case, a combination patent is involved, additional aspects of nonobviousness come into play. The court must "scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements." 18 Such a patent

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must create a synergistic effect, one in which the combination of elements results "in an effect greater than the sum of the several effects taken separately." 19

After discussing the rules relating to obviousness as set out in § 103 and John Deere, supra, the District Judge determined the level of skill of the ordinary worker in the art and the scope of the prior art, specifically scrutinizing in some detail six multisided lighting fixtures which were submitted in evidence by Kidde and were formed from the same components as the patent in suit. He found that:

"the level of ordinary skill in the art included the ability to design different lighting fixtures of somewhat varying styles having as their component elements a base, a cage, a roof, a vent cap, and a finial. Hexagonal cages of the type employed by Daum were known and commonly employed by other lighting fixture designers a number of years prior to the filing of his application for the patent in suit. Also, roofs corresponding in number of sides to the cage and exhibiting simulated ventilators set out from each panel thereof were a known quantity in lighting fixture design more than a year before the filing of this patent application. It is further true that such roofs were often conical in shape. Moreover, vent caps were commonly superimposed on the roofs of lighting fixtures, paralleling them...

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