494 F.2d 383 (6th Cir. 1974), 73-1470, Schnadig Corp. v. Gaines Mfg. Co., Inc.
|Citation:||494 F.2d 383, 181 U.S.P.Q. 417|
|Party Name:||SCHNADING CORPORATION, Plaintiff-Appellee, v. GAINES MANUFACTURING CO., INC., Defendant-Appellant.|
|Case Date:||March 12, 1974|
|Court:||United States Courts of Appeals, Court of Appeals for the Sixth Circuit|
Argued Dec. 11, 1973.
[Copyrighted Material Omitted]
Roy Keathley, Memphis, Tenn., on brief, for defendant-appellant; David Rabin, Greensboro, N.C., of counsel.
Timothy L. Tilton, John W. Chestnut, Chicago, Ill., on brief, for plaintiff-appellee; Henry T. V. Miller, Memphis, Tenn., of counsel.
Before PHILLIPS, Chief Judge, MILLER, Circuit Judge, and O'SULLIVAN, Senior Circuit Judge.
PHILLIPS, Chief Judge.
This is an appeal from a decision of the District Court holding Design Patent No. 212,602 valid and infringed. 1 We affirm.
Schnadig Corporation (Schnadig) is the owner of Design Patent No. 212,602 for a 'Sectional Sofa.' The patent issued on November 5, 1968, on an application filed by Robert A. Gera on March 14, 1968.
Appellee, Schnadig, is a Delaware corporation having its company offices in Chicago, Illinois, and production facilities in many states. Schnadig is engaged in the manufacture and sale of living room furniture, including sectional sofas.
Appellant, Gaines Manufacturing Co., Inc. (Gaines), is a Tennessee corporation with its headquarters in McKenzie, Tennessee. Gaines is also engaged in
the manufacture of living room furniture.
Jurisdiction arises under 28 U.S.C. § 1338(a).
Schnadig's Vice-President for Design, Robert A. Gera, created the patented design during November and December 1967. Mr. Gera first prepared a group of sketches and then constructed a halfscale clay model. Further refinements were effected and a full scale prototype was constructed. In January 1968 the sofa was displayed at the Winter Furniture Markets. It was designated as the Model 4000 and was the feature unit of Schnadig's new Corona Collection. The sofa was an immediate success, remained extremely popular in subsequent years and has enjoyed respect throughout the furniture industry.
The patented design is for an L-shaped or 'corner-type' sectional. It consists of a 2, 3 seat ottoman style sofa resting on a pedestal base. The two seat section is bounded on one side by a curved arm. The longer section is armless and adjoins a separate rectangular ottoman. Extensive use is made of wood trim, much of it in the form of rope turnings. Although the sofa could broadly be classified as of Spanish style, the overall effect is one of warm and inviting as opposed to the cold harsh lines of traditional Spanish style sofas. The design is illustrated in the patent drawing:
Schnadig admits that the component parts of the sofa combination were generally old and known in the trade. However, they argue that the overall appearance of the styling and decoration is patentable. They contend and the District Court found that the Gera design was a creative design, rather than a restyled design, which represented a new concept embodying a new and distinctive style. Judge Wellford characterized the style as 'warm Spanish' and found that it involved distinctive differences in overall shape, form, appearance and impression from any of the prior art designs.
Gaines challenges the holding of the District Court on three grounds: 1) the patent is anticipated by and obvious over the prior art; 2) the patent was procured by fraud or unclean hands in that more pertinent and relevant prior art was concealed, suppressed and withheld from the Patent Office; and 3) there is no infringement.
The prior art showed 2, 3 seat ottoman sectional sofas in Modern, Contemporary, Spanish and Mediterranean styles. Additionally, pedestal bases, semi-circular back cushions, armless sectional units, curved arm sectional units and rope turnings were known in the art.
However, the overall appearance and emphasis of the art was either Contemporary or Mediterranean with emphasis on horizontal, angular or rectangular features, i.e., linear qualities, and was cold and harsh. To the contrary, the Gera design was smoothly flowing, warm and inviting.
With respect to specific references in the prior art, Gaines challenges Judge Harry W. Wellford's determination that the Schnadig Model 9020 and the Gaines Model 565 were not prior art.
Relying on Illinois Tool Works, Inc. v. Solo Cup Co., Inc., 461 F.2d 265, 269-270 (7th Cir. 1972), and Application of Facius, 408 F.2d 1396, 1406 (CCPA 1969), Judge Wellford refused to include the Model 9020 in the prior art because it was Gera's own invention and was not disclosed to the public more than one year prior to the filing date of the Gera patent. Judge Wellford, after noting that the Gaines Model 565 comprised 'substantially the same design' as the Model 9020, also refused to include it in the prior art because Gaines had failed to prove prior use with clear and satisfactory evidence. See Cold Metal Prod. Co. v. E. W. Bliss Co., 285 F.2d 244 (6th Cir. 1960), cert. denied, 366 U.S. 911, 81 S.Ct. 1085, 6 L.Ed.2d 235 (1961).
Even though the District Court excluded these models from the 'technical' prior art, it considered them along with the other art in arriving at the final holding of patent validity. We also have considered these models as part of the prior art and, therefore, do not reach the issues and arguments presented in Gaines' brief with respect to their exclusion vel non.
Designs are governed by 35 U.S.C. § 171. 2 To be patentable a design must be new, original, ornamental and nonobvious. Hadco Products, Inc. v. Walter Kidde and Co., 462 F.2d 1265, 1269 (3rd Cir.), cert. denied, 409 U.S. 1023, 93 S.Ct. 464, 34 L.Ed.2d 315 (1972). Novelty and unobviousness are separate and distinct tests, and both must be presented in a patentable design. In Monroe Auto Equipment Co. v. Heckethorn Mfg. and Supply Co., 332 F.2d 406, 414-415 (6th Cir.), cert. denied, 379 U.S. 888, 85 S.Ct. 160, 13 L.Ed.2d 93 (1964), we stated:
'We must be careful to make the distinction between novelty and invention in relation to anticipation. Novelty and invention are two separate tests, and anticipation belongs only with novelty. This Court has pointed out that some courts tend, mistakenly, to use anticipation as an equivalent of invention. Allied Wheel Products v. Rude, (6 Cir.) supra, 203 F.2d (752) at 761; Firestone v. Aluminum Co. of America, (6 Cir., 285 F.2d 928) supra. See also, Borkland v. Pedersen, 244 F.2d 501, 502 (C.A. 7). Thus it is incorrect to say that a patent lacks invention because it is anticipated. If it is anticipated it lacks novelty; it lacks invention if it would have been obvious.
'From this it should be clear that even though the prior art may not anticipate the patent in question, the disclosures of the prior art may negative invention. Harvey v. Levine, 322 F.2d 481, 483 (C.A. 6); Allied Wheel Products v. Rude, supra, 206 F.2d at 760; Leishman v. General Motors Corp., 191 F.2d 522, 530 (C.A. 9); Seymour v. Ford Motor Co., 44 F.2d 306, 309 (C.A. 6). That is, a prior device may not be substantially identical to the patented device and therefore cannot anticipate; however, it may be that in the light of this prior device the patented device would have been obvious.'
The ultimate question of patent validity is one of law and, accordingly, is not subject to the confines of the
clearly erroneous test mandated by Fed.R.Civ.P. 52(a). See, e.g., Kolene Corp. v. Motor City Metal Treating, Inc., 440 F.2d 77, 81 (6th Cir.), cert. denied, 404 U.S. 886, 92 S.Ct. 203, 30 L.Ed.2d 169 (1971). However, findings bearing on novelty and unobviousness, insofar as they rest upon factual issues, are subject to the clearly erroneous rule. As we stated in Kolene, supra:
'The question of 'obviousness' in determining patent validity is a mixed question of both fact and law. Kaiser Industries v. McLouth Steel Corp., 400 F.2d 36, 41 (6th Cir.); National Filters, Inc. v. Research Products Corp., 384 F.2d 516 (5th Cir.); Hensley Equipment Co. v. Esco Corp., 375 F.2d 432 (9th Cir.). In ruling on that question the Supreme Court said:
'(1) Under § 103, the scope and content of the prior art are to be determined;
'(2) Differences between the prior art and the claims at issue are to be ascertained;
'(3) And the level of ordinary skill in the pertinent art...
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