S. Dresner & Son v. Doppelt

• Decision Date: 22 May 1941
• Docket Number: No. 7233.,7233.
• Citation: 120 F.2d 50
• Parties: S. DRESNER & SON, Inc., v. DOPPELT et al.
• Court: U.S. Court of Appeals — Seventh Circuit

120 F.2d 50 (1941)

S. DRESNER & SON, Inc., v. DOPPELT et al.

No. 7233.

Circuit Court of Appeals, Seventh Circuit.

May 22, 1941.

Geo. I. Haight, M. K. Hobbs, and Max Richard Kraus, all of Chicago, Ill., for appellants.

Ephraim Banning, Laurence I. Wood, and George A. Chritton, all of Chicago, Ill., for appellee.

Before SPARKS and TREANOR, Circuit Judges, and BRIGGLE, District Judge.

SPARKS, Circuit Judge.

Appellee initiated this action in the District Court for declaratory relief against appellants. The relief sought was invalidation of appellants' design patent to Doppelt, No. 106,132, and a decree that such patent was not infringed by appellee's design for a bag for toilet articles. Appellants counterclaimed with a charge of infringement and unfair competition, and prayed that their patent be held valid and infringed.

The District Court held that the patent was invalid for lack of invention over the prior art, and that there had been no unfair competition by appellee. The only error relied upon by appellants is the failure of the District Court to find their patent valid.

The District Court was of the opinion that nothing more than the skill of the average or ordinary designer, with the prior art before him, would be required to make the design of the patent in suit. Hence it held that invention was not involved. It was of the further opinion that everything in the design of the patent was found in Doppelt's earlier design patent, No. 101,439, and that the maker of the design shown in the patent in suit did not have to go outside the earlier design to produce the design shown in the patent before us.

The correctness of the District Court's holding of invalidity depends upon the nature of the statutory test for "invention" which is applicable to a design patent. Appellants contend that the test of invention in the field of design patents is not the same as that applied in the field of mechanical patents, and without suggesting an exclusive test for invention in design, they place reliance in this case upon the producing of a "new and ornamental design" which has received the sanction of the Patent Office and also the approval of the purchasers of the commodity, and the compliment of imitation by a competitor.

The first statute protecting designs was enacted in 1842, providing for the issuance of a patent to one "who by his * * * own industry, genius, efforts, and expense, may have invented or produced any new and original design for a manufacture * * * or any new and original shape or configuration of any article of manufacture * * *." 5 Stat. 544. This language was repeated in 1861. 12 Stat. 248. The Act of 1870 provided that "Any person who, by his own industry, genius, efforts, and expense, has invented or produced any new and original design for a manufacture * * * or any new, useful, and original shape or configuration of any article of manufacture * * * may * * * obtain a patent therefor." 16 Stat. 209. In 1902, the present statutory provision was enacted to provide for issuance of a patent to any person who has invented any new, original, and ornamental design for an article of manufacture. 35 U.S.C.A. § 73.

By the terms of the present Act patentable design for an article of manufacture must be characterized by an invention of a new, original and ornamental design. The mere production of such a design is not sufficient. The word "produced" which appeared in the earlier enactments has disappeared from the present Act, and there is no authority to substitute it for the word "invented," and thereby qualify the usual concept of invention. However, the words "invented" and "new" and "original" must be construed together in applying the usual rule that there must be an exercise of inventive genius, which precludes the grant of patent monopoly upon the exercise of mere skill of an ordinary designer who is chargeable with knowledge of the prior art.

Appellants have cited cases to the effect that a design is patentable if it produces a new and pleasing impression. See Wood & Sons v. Abelson's, Inc., 3 Cir., 74 F.2d 895; Boyle v. Rousso, 8 Cir., 16 F.2d 666. They place particular stress on the language in Gorham Mfg. Co. v. White, 14 Wall. 511, 525, 81 U.S. 511, 20 L.Ed. 731. In that case the Acts of 1842 and 1861 were involved, and there was no question of patentability, the sole question being whether there had been infringement. The Court stated in discussion of what constitutes identity of design and infringement: "* * * the thing invented or produced, for which a patent is given, is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form. The law manifestly contemplates that giving certain new and original appearances to a manufactured article may enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public. It therefore proposes to secure for a limited time to the ingenious producer of those appearances the advantages flowing from them. * * To speak of the invention as a combination or process, or to treat it as such, is to overlook its peculiarities. * * * We do not say that in determining whether two designs are substantially the same, differences in the lines, the configuration, or the modes by which the aspects they exhibit are not to be considered; but we do think the controlling consideration is the resultant effect."

The conclusion of the Court to which the prior language was directed, explains such prior language. It is similarity in the peculiar or distinctive appearance which constitutes infringement rather than identity in the details producing such appearance. Bearing in...