878 F.2d 1418 (Fed. Cir. 1989), 89-1241, Racing Strollers, Inc. v. TRI Industries, Inc.
|Citation:||878 F.2d 1418|
|Party Name:||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.|
|Case Date:||June 26, 1989|
|Court:||United States Courts of Appeals, Court of Appeals for the Federal Circuit|
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.
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
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.
In the court's amended order denying the TRO, dated December 14, 1988, the trial judge said:
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...
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