Racing Strollers, Inc. v. TRI Industries, Inc.

• Decision Date: 26 June 1989
• Docket Number: No. 89-1241,89-1241
• Citation: 878 F.2d 1418,11 U.S.P.Q.2d 1300
• Parties: , 11 U.S.P.Q.2d 1300 RACING STROLLERS, INC., Plaintiff-Appellant, v. TRI INDUSTRIES, INC., Jay Paulson, Paulson Marketing and Tim Galligan, Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1418

878 F.2d 1418

58 USLW 2027, 11 U.S.P.Q.2d 1300

RACING STROLLERS, INC., Plaintiff-Appellant, v. TRI INDUSTRIES, INC., Jay Paulson, Paulson Marketing and Tim

Galligan, Defendants-Appellees.

No. 89-1241.

United States Court of Appeals, Federal Circuit.

June 26, 1989.

George C. Rondeau, Jr., Seed & Berry, of Seattle, Wash., argued for plaintiff-appellant. With him on the brief was Maurice J. Piro.

Gerald E. Helget, Palmatier & Sjoquist, P.A., of Minneapolis, Minn., argued for defendants-appellees. With him on the brief were Paul L. Sjoquist and H. Dale Palmatier.

Before MARKEY, Chief Judge, and FRIEDMAN, RICH, NIES, NEWMAN, BISSELL, ARCHER, MAYER and MICHEL, Circuit Judges.

RICH, Circuit Judge.

This interlocutory appeal comes to us under 28 U.S.C. Sec. 1292(b), the District Court for the District of Minnesota, Fourth Division, Rosenbaum, J., having certified to this court a potentially controlling question of law as to which there is substantial ground for difference of opinion, the answer to which may advance the ultimate determination of this ongoing litigation. We have jurisdiction under 28 U.S.C. Secs. 1292(c), 1338(a), and 1295(a).

Appellant, Racing Strollers, Inc., filed its Petition for Leave to Appeal under Sec. 1292(b) which we granted by order dated January 6, 1989. On February 1, 1989, appellant also filed a suggestion for hearing in banc because it was requesting us to overrule a decision of the Court of Customs and Patent Appeals which we regard as precedent in accordance with South Corp. v. United States, 690 F.2d 1368, 1370 n. 2, 215 USPQ 657, 658 n. 2 (Fed.Cir.1982). The suggestion was accepted and an in banc hearing was held on June 7, 1989. The issues before us in connection with the certified question were fully briefed.

BACKGROUND

This suit is, inter alia, for infringement of a design patent, No. Des. 297,525, issued to appellant as assignee September 6, 1988, on a "Frame for a Baby Stroller." The application for the design patent was filed April 14, 1986, but it is stated on the face of the patent to have been a division of an application filed October 22, 1984, now abandoned. The latter application was for a "utility" or mechanical patent. Shortly after suit was filed, plaintiff-appellant applied to the trial court for a temporary In the court's amended order denying the TRO, dated December 14, 1988, the trial judge said:

                restraining order (TRO) which application defendant-appellee opposed.  The TRO was denied on the ground plaintiff had not sustained its burden of establishing a reasonable likelihood of success on the merits.  This was because plaintiff had admittedly sold strollers embodying the patented design more than a year before the filing date of the application for the design patent, which would, prima facie, invalidate the design patent under 35 U.S.C. Sec. 102(b).  Plaintiff countered, however, with the argument that his design patent application was entitled to "priority" as of the filing date of its parent application for the utility patent which was less than a year after the sale.  Countering this, in turn, defendant relied on the case of In re Campbell, 41 CCPA 896, 212 F.2d 606, 101 USPQ 406 cert. denied, 348 U.S. 858, 75 S.Ct. 82, 99 L.Ed. 676 (1954), which held, in effect, as a question of first impression for that court, that an application for a design patent cannot be a division of an application for a mechanical patent, and thus entitled to the benefit of its filing date.  Plaintiff pointed, to no avail, to more recent decisions of this court and of the Patent and Trademark Office (PTO) clearly inconsistent with Campbell.    The trial judge then stated that he had seen no indication that Campbell had ever been overruled or had "died by attrition," and suggested certifying the legal question to this court
                

This order involves a controlling question of law as to which there is a substantial ground for difference of opinion. An immediate appeal of this Order may materially advance the ultimate determination of the litigation.

Accordingly, this Court certifies the following question of law for interlocutory appeal pursuant to 28 U.S.C. Sec. 1292(b):

Whether an application for a design patent filed as a division of an earlier filed application for a utility patent is entitled to the benefit of the earlier filing date of the utility application under 35 U.S.C. Sec. 120 and 35 U.S.C. Sec. 121.

OPINION

As submitted, the question is incapable of being answered, as a generalized proposition, categorically yes or no because each case will depend on its own fact situation. However, it can be put into answerable form and we shall do that shortly.

Giving a patent application the benefit of the earlier filing date of another earlier filed application has a statutory basis and does not rest on the mere claim or recitation of the applicant. Nor is the mere labeling of an application a "division" enough. The statute primarily involved, first enacted as a part of the Patent Act of 1952, provides, insofar as relevant to this case, as follows:

Sec. 120. Benefit of earlier filing date in the United States

An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States ... by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.

It is seen that this provision contains a number of "ifs" and at the outset an important condition that in the earlier application being relied on the invention subsequently claimed is "disclosed in the manner provided by the first paragraph of section 112." This paragraph, therefore, is an integral part of Sec. 120 and reads:

Sec. 112. Specification

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

In the case of an "ornamental design for an article of manufacture," with which we are here concerned, the patenting of which is provided for in 35 U.S.C. Sec. 171, the "best mode" requirement of the first paragraph of Sec. 112 is not applicable, as a design has only one "mode" and it can be described only by illustrations showing what it looks like (though some added description in words may be useful to explain the illustrations). As a practical matter, meeting the remaining requirements of Sec. 112 is, in the case of an ornamental design, simply a question of whether the earlier application contains illustrations, whatever form they may take, depicting the ornamental design illustrated in the later application and claimed therein by the prescribed formal claim:

The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.

37 CFR 1.153(a), in relevant part.

Section 121 of the patent statute is a section pertaining specifically to "Divisional applications." For purposes of this opinion it need not be discussed extensively, its operative sentence being: "If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application." (Emphasis ours.) We do note, however, that, like Sec. 120, it is an entitlement provision.

The certified question, quoted above, refers to both Sec. 120 and Sec. 121 and to divisional applications. It is seen from the foregoing that Sec. 121 requires compliance with Sec. 120 which in turn requires compliance with part of Sec. 112. Furthermore, Sec. 121 does not assume that every application labeled a "division" is in compliance with Sec. 120. There are detailed factual questions to be resolved before it can be said that an application is entitled, under Sec. 120, to the filing date of an earlier application. They are determined by Sec. 120 and Sec. 112, not by Sec. 121.

It seems clear to us that the question being asked by the trial court, considering the circumstances out of which it arose, was engendered entirely by the 1954 Campbell decision and that what the trial judge really wants to know is whether we are going to adhere to what Campbell decided in view of recent decisions which seem to be in conflict with it, particularly KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 228 USPQ 32 (Fed.Cir.1985). In fact, the phraseology of the certified question is in terms of the facts of the Campbell case in which it was asserted that the application for the design patent was a division of an earlier filed application for a utility patent, the benefit of the filing date of which was claimed to overcome a Sec. 102(b) rejection by antedating a reference. And we are asked whether we will grant that benefit, which is tantamount to asking us whether we will or will not stand by Campbell as a precedent. If we do, the answer to the certified question would have to be "no."

Appellant appreciates the situation full well and asks us outright to overrule Campbell. Knowing that no panel of judges less than a majority of the active judges on the court can do that, appellant also asked us to hear this appeal in banc. Having voted to consider the appeal in banc, we will now recast the...