EH Sheldon & Co. v. Miller Office Supply Co.

• Decision Date: 08 March 1960
• Docket Number: Civ. A. No. 2221.
• Parties: E. H. SHELDON & CO., Plaintiff, v. MILLER OFFICE SUPPLY CO. (Inc.) Defendant.
• Court: U.S. District Court — Southern District of Ohio

188 F. Supp. 67

E. H. SHELDON & CO., Plaintiff, v. MILLER OFFICE SUPPLY CO. (Inc.) Defendant.

Civ. A. No. 2221.

United States District Court S. D. Ohio, W. D.

March 8, 1960.

Lawrence B. Biebel and Marechal, Biebel, French & Bugg, Dayton, Ohio, Wupper, Gradolph & Love, Benjamin F. Wupper and John T. Love, Chicago, Ill., for plaintiff.

Toulmin & Toulmin, H. H. Brown and H. A. Toulmin, Jr., Dayton Ohio, for defendant.

CECIL, Circuit Judge, sitting by designation.

The plaintiff, E. H. Sheldon & Co., a corporation, in its complaint charges the defendant, Miller Office Supply Co., Inc., a corporation, with infringing a design patent to which it holds legal title. The defendant denies infringement and sets up the affirmative defense of invalidity of the patent.

The case was tried and submitted to the Court upon the pleadings, the evidence and briefs of counsel.

The patent in suit is Design number 173281 and covers an invention by R. B. Morrison of a laboratory table unit. The patent was assigned by Morrison to the plaintiff. The plaintiff has engaged in the manufacture and sale of the laboratory table units under the patent since its issue.

The defendant sells school equipment throughout the state of Ohio and is the exclusive agent in Ohio for Taylor Manufacturing Company, of Taylor, Texas. This company made the accused product which was sold by the defendant to Gallia Academy and Wickliffe High Schools. These sales are the subject of the charge of infringement.

Design patents are authorized by Section 171 of Title 35 U.S.C. This section reads, "Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title."

The leading case defines design patents as follows: "They contemplate not so much utility as appearance, and that, not an abstract impression, or picture, but an aspect given to those objects mentioned in the acts. It is a new and original design for a manufacture, * * * a new or original impression or ornament to be placed on any article of manufacture, * * * a new and useful pattern, print, or picture, to be either worked into, or on, any article of manufacture; or a new and original shape or configuration of any article of manufacture — * * * And 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." Gorham Company v. White, 14 Wall. 511, 524, 525, 81 U.S. 511, 20 L.Ed. 731.

The scope of the alleged invention is the first subject presented by the issues in the case. This is a question of law. Heald v. Rice, 104 U.S. 737, 26 L.Ed. 910; Motor Wheel Corp. v. Rubsam Corp., 6 Cir., 92 F.2d 129; Baldwin Rubber Co. v. Paine & Williams Co., 6 Cir., 99 F.2d 1.

The claim of the patentor is, "The ornamental design for a laboratory table unit, substantially as shown and described." The only specifications refer to the drawings in Figures one and two.

Where there are no specifications or detailed description the claim covers the design as a whole as shown in the drawings or illustrations. Dobson v. Dornan, 118 U.S. 10, 14, 15, 6 S.Ct. 946, 30 L.Ed. 63; Edison Electric Appliance Co. v. Fitzgerald Mfg. Co., 2 Cir., 32 F. 2d 705, 706; Ashley v. Samuel C. Tatum Co., 2 Cir., 186 F. 339. In Ashley et al. v. Weeks-Numan Co., 2 Cir., 220 F. 899, the court said, at page 903, "and in Ashley v. Tatum, 2 Cir., 186 F. 339, * *, which was a design patent for an ink-stand, and which was without any written description, we held that, in the absence of a written specification, the patentee is limited to substantially the precise article shown in the drawing of the patent." (Emphasis added.)

The patent here then is a diamond-with-stem table top housing or covering cabinets within its confines as a whole and as shown in the drawings. The diamond-with-stem table top is the distinctive feature of the design and is that which distinguishes it from the prior art.

"The thing invented for which a design patent is given is that which gives a distinctive appearance to the article to which it may be applied." Thabet Mfg. Co. v. Kool Vent Metal Awning Corp. of America, 6 Cir., 226 F.2d 207, 212.

The defense charges that the patent is invalid on several counts.

"A patent shall be presumed valid. The burden of establishing invalidity of a patent shall rest on a party asserting it." Section 282, Title 35 U.S.C. It is to be noted from Section 171, above quoted, that a design to be patentable must constitute invention and be new, original and ornamental.

Counsel for the defendant challenge the patent in suit for the absence of all of these elements. In support of their argument they say that the Morrison patent is anticipated by prior art. (Defendant's Ex. U, containing six mechanical patents, three design patents and two foreign patents.) To prove their point counsel take various features of Morrison's Laboratory table unit, one by one, and compare them with some feature of the various prior patents.

The Court does not understand this to be a proper test for determining anticipation by prior art. In Ashley v. Weeks-Numan Co., supra, the court said at page 902 of 220 F., "This court has before said, and now repeats, that the fact that each separate element in a patented design was old does not negative invention, which may reside in the manner in which they are assembled, since it is the design as a whole, and the impression it makes on the eye, which must be considered." The subject of inquiry here, involves beauty, ornamentation, something that appeals to the aesthetic sense. "Lack of novelty or originality in a design cannot be successfully alleged, unless, to an intelligent general observer interested in the subject, it has the same appearance as that of some design previously produced." Matthews & Willard Mfg. Co. v. American Lamp & Brass Co., C.C., 103 F. 634, 639.

"Gorham Co. v. White, supra (14 Wall. 511, 81 U.S. 511, 20 L.Ed. 731) sets forth the salient features of the statute and the purpose which it was designed to serve; but the court was concerned with the infringement and not the validity of the patent in suit. Later cases developed the standards to be used when the validity of a design patent was at issue. Validity is to be tested by the appearance of the patented design as a whole. Dobson v. Dornan, 118 U.S. 10, 15, 6 S.Ct. 946, 30 L.Ed. 63. `A combination of elements that are old is patentable, if it produces a new and useful result as the product of the combination; and a design which avails itself of suggestions old in art is patentable, if as a whole, it produces a new and pleasing impression on the aesthetic sense.' Matthews & Willard Mfg. Co. v. American Lamp & Brass Co., 3 Cir., 103 F. 634, 639. Nevertheless, there must be an exercise of the inventive faculty, and if the design lacks this quality, it will not suffice to say that it is new, original and ornamental, and has received wide public acceptance. Smith v. Whitman Saddle Co., 148 U.S. 674, 13 S.Ct. 768, 37 L. Ed. 606; (and other citations) `In short, the test is whether the design involved "a step beyond the prior art requiring what is termed `inventive genius'".' General Time Instrument Corp. v. U. S. Time Corp., 2 Cir., 165 F.2d 853, 854." Glen Raven Knitting Mills, Inc. v. Sanson Hosiery Mills, Inc. et al., 4 Cir., 189 F.2d 845, 850.

"The test as to a Design Patent offered as a reference, is, the impression that it makes as a...