758 F.2d 167 (6th Cir. 1985), 82-1652, Kwik-Site Corp. v. Clear View Mfg. Co., Inc.

Docket Nº:Plaintiffs-Appellees (82-1652/82-1900), Counter
Citation:758 F.2d 167
Party Name:225 U.S.P.Q. 805 KWIK-SITE CORPORATION, Ivan Jiminez, and Irving Rubin,
Case Date:March 27, 1985
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit

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758 F.2d 167 (6th Cir. 1985)

225 U.S.P.Q. 805

KWIK-SITE CORPORATION, Ivan Jiminez, and Irving Rubin,

Plaintiffs-Appellees (82-1652/82-1900), Counter

Defendants-Appellants (82-1701),



Norman Weast, d/b/a Neumann's Gun Shop,

Defendants-Appellants (82-1652/82-1900),

Counter Plaintiffs-Appellees (82-1701).

Nos. 82-1652, 82-1701 and 82-1900.

United States Court of Appeals, Sixth Circuit

March 27, 1985

Argued July 31, 1984.

As Amended April 5, 1985.

Rehearing Denied May 3, 1985.

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[Copyrighted Material Omitted]

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Joseph R. Papp (argued), Harness, Dickey & Pierce, Birmingham, Mich., for defendants-appellants in Nos. 82-1652 and 82-1900.

Clifford R. Williams (argued), Detroit, Mich., for plaintiffs-appellees in Nos. 82-1652 and 82-1900.

Clifford R. Williams (argued), Detroit, Mich., for counter defendants-appellants in No. 82-1701.

Joseph R. Papp (argued), Harness, Dickey, & Pierce, Birmingham, Mich., for counter plaintiffs-appellees in No. 82-1701.

Before EDWARDS, Circuit Judge, [*] BROWN, Senior Circuit Judge, and DOWD, District Judge. [**]

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BAILEY BROWN, Senior Circuit Judge.

This action for patent infringement, brought pursuant to 35 U.S.C. Secs. 271, 281, involves three separate patents, all of which relate to mounts for rifle sights. The parties involved are Kwik-Site Corporation, a Michigan corporation, and its principals Ivan Jiminez and Irving Rubin (hereinafter referred to as Kwik-Site) and Clear View Manufacturing Company, Inc., a Michigan corporation, and its principals Gerald Weast and Norman Weast (hereinafter referred to as Clear View).

Initially, Kwik-Site filed an action alleging: (1) a claim that Clear View was infringing Kwik-Site's Design Patent Number 231,674 (D.'674); (2) a claim of unfair competition pursuant to the Lanham Act, 15 U.S.C. Sec. 1125(a); and (3) a state law claim of misappropriation of business values and unfair competition. Clear View denied these allegations and filed several counterclaims, the relevant one being that Kwik-Site was infringing Clear View's Design Patent Number 248,309 (D.'309). Kwik-Site denied the counterclaims and amended its complaint to allege that Clear View was infringing Kwik-Site's Patent Number 3,724,800 ('800).

On the issue whether Kwik-Site infringed Clear View's patent D.'309, the district court granted Clear View's motion for summary judgment and (1) held that Clear View's patent D.'309 was valid and was infringed by Kwik-Site's Kwik-Mount/22 and (2) awarded damages. Kwik-Site has appealed this grant of summary judgment and award of damages.

A five day bench trial was held on the other issues. In an unpublished opinion, the district found: (1) Kwik-Site patent '800 was valid and had been infringed by Clear View; and (2) Kwik-Site patent D.'674 was valid and had been infringed by Clear View. The court also found Clear View guilty of unfair competition in violation of the Lanham Act, 15 U.S.C. Sec. 1125(a), and further held that Clear View's willful infringement entitled Kwik-Site to treble damages under 35 U.S.C. Sec. 284. The district court thereafter granted an injunction in favor of Kwik-Site to enforce its holdings. Clear View has appealed each of these holdings.

On appeal, we affirm the trial court's grant of Clear View's motion for summary judgment holding Clear View patent D.'309 valid and infringed and the award of damages. We reverse the trial court's holding that Kwik-Site patent D.'674 was valid and was infringed and hold instead that patent D.'674 is invalid. We reverse the trial court's holding that Kwik-Site patent '800 was valid and infringed and instead hold that patent '800 is invalid. Regarding liability for unfair competition under the Lanham Act, we reverse the district court and hold that Kwik-Site failed to establish any Lanham Act violation. Finally, having found invalid both Kwik-Site patents D.'674 and '800, we reverse the trial court's award of treble damages under 35 U.S.C. Sec. 284.

I. Trial Court's Grant of Summary Judgment on D.'309

After extensive discovery had been completed, Clear View filed several motions for summary judgment, only one of which was granted and is on appeal to this court. In that motion, Clear View alleged that Kwik-Site's Kwik-Mount/22 infringed Clear View's design patent D.'309. Although Kwik-Site filed memoranda in opposition to Clear View's other motions for summary judgment, Kwik-Site did not respond at all to Clear View's motion for summary judgment on the issue of Kwik-Site's infringement of D.'309. 1

At the hearing on Clear View's motion for summary judgment, Kwik-Site argued that a mount manufactured for over eighteen years by Selco Manufacturing Company, a North Carolina firm, was substantially identical to that covered by D.'309 and

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therefore was prior art. Kwik-Site's counsel presented a brochure from Selco and contended that it described such a mount. Kwik-Site also introduced into evidence its Kwik-Mount/22 accused of infringing the D.'309 and offered to have Kwik-Site personnel testify that the Kwik-Mount/22 was not similar to the D.'309. Kwik-Site did not, however, offer any affidavits in support of its contentions but, during the hearing, did ask the trial judge for a delay in order to obtain an affidavit from the North Carolina manufacturer regarding how long he had been manufacturing the allegedly identical sight. The trial court denied Kwik-Site's request for delay on the ground that the products shown in the brochure were in no way similar to the D.'309, and therefore it was irrelevant when those products were manufactured. Then, based on its visual comparison of Kwik-Site's Kwik-Mount/22 with Clear View's D.'309 mount, the court found that to the ordinary observer the two mounts were so similar as to constitute infringement of the D.'309. There being no genuine issue of material fact, the court granted Clear View's motion for summary judgment on the issue of Kwik-Site's infringement of D.'309 and later awarded damages.

Although Kwik-Site attempted to oppose Clear View's motion for summary judgment on two grounds, i.e., that there was "pre-existing art," and that its product did not infringe D.'309, on appeal Kwik-Site contends only that the district court abused its discretion in not allowing Kwik-Site to offer, by affidavit or in other proper manner, proof of the Selco mount and that the Selco mount was prior art.

We conclude, however, that there was no abuse of discretion because the proof showed without dispute that Kwik-Site had knowledge of the Selco mount at least a week before the hearing on the summary judgment motion and had neither obtained proof nor requested a continuance, prior to the hearing, in order to obtain proof.

We therefore affirm the grant of summary judgment for infringement of the D.' 309 patent and the award of damages.

II. Validity of Design Patent D.'674

The second major issue on appeal is the correctness of the trial court's ruling that Kwik-Site's Design Patent Number 231,674 (D.'674) is valid and is infringed by Clear View's See Through mount. At trial Clear View contended D.' 674 was invalid for several reasons, many of which the trial court addressed and found meritless. The trial court's opinion, however, did not directly address the issue whether, as Clear View contends, D.'674 is invalid for the reason that its configuration, which distinguishes it from prior art, is functional and utilitarian rather than ornamental. Indeed, the trial judge held that it was the functional and utilitarian configuration of D.'674 that made it patentable. (Jt.App. 248). Thus, the very reason that the district court held D.'674 valid is precisely the reason why it is invalid.

A design patent may be issued for "any new, original and ornamental design for an article of manufacture." 35 U.S.C. Sec. 171 (emphasis added). In order to be valid, a design patent "must disclose a design that is new, original and ornamental, unanticipated and inventive in character, and beyond the skill of the ordinary designer or draftsman ... A design patent cannot be obtained to protect a mechanical function or cover an article whose configuration affects its utility alone." Spaulding v. Guardian Light Co., 267 F.2d 111, 112 (7th Cir.1959) (citations omitted) (emphasis added). See for same proposition Schwinn Bicycle Co. v. Goodyear Tire & Rubber Co., 444 F.2d 295, 298 (9th Cir.1970); Barofsky v. General Electric Corp., 396 F.2d 340, 342 (9th Cir.1968), cert. denied, 393 U.S. 1031, 89 S.Ct. 644, 21 L.Ed.2d 575 (1969); Methode Electronics, Inc. v. Elco Corp., 385 F.2d 138, 141 (3d Cir.1967); Bentley v. Sunset House Distributing Corp., 359 F.2d 140, 145 (9th Cir.1966).

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A see through mount is an apparatus that attaches to the top of a rifle and functions to hold a telescopic sighting device above and provides an area below through which the iron sight may be used. The see through mounts at issue here are comprised of two metal rings, one on top of the other. The top (mounting) ring is round in shape and holds a telescopic sighting device. The lower ring, or underscope, is a kidney-shaped opening that allows the shooter an unmagnified view for sighting without removing the telescopic sight. Figures 1 and 2, Appendix hereto, depict a see through mount and illustrate how the mount appears when attached to a rifle. Figures 3 and 4, Appendix, show two views of the mount embodied in Kwik-Site's patent D.'674.

Clear View correctly contends the only feature distinguishing the D.'674 see through mount from prior art is the enlargement of the lower ring. According to Clear View, and we agree, altering the...

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