Adidas Fabrique v. Andmore Sportswear Corp., 82 Civ. 3325.

CourtUnited States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
Citation578 F. Supp. 1568,223 USPQ 1109
Docket NumberNo. 82 Civ. 3325.,82 Civ. 3325.
PartiesADIDAS FABRIQUE DE CHAUSSURES DE SPORT, Plaintiff, v. ANDMORE SPORTSWEAR CORP. and The Finals Racing Swimsuits, Ltd., Defendants and Counterclaim Plaintiffs, v. ADIDAS FABRIQUE DE CHAUSSURES DE SPORT and Arena U.S.A., Inc., Counterclaim Defendants.
Decision Date11 January 1984


David W. Brinkman, Edward M. Prince, William K. West, Jr., Cushman, Darby & Cushman, Washington, D.C., Ronald M. Senio, Ide & Haigney, New York City, for plaintiff.

Allen I. Rubenstein, Jane Shay Wald, Gottlieb, Rackman & Reisman, New York City, for defendant.


GAGLIARDI, District Judge.

Plaintiff Adidas Fabrique De Chaussures De Sport ("Adidas") brought this action against defendants Andmore Sportswear Corp. ("Andmore") and The Finals Racing Swimsuits, Ltd. ("Finals"), alleging that four of Adidas' patents for women's swimsuits have been infringed by the defendants. Defendants have moved for partial summary judgment pursuant to Rule 56, Fed.R.Civ.P., on the ground that two of plaintiff's patents are invalid by virtue of "double patenting."


Plaintiff is the assignee of three design patents and one utility patent that are at issue in this case.1 A fourth design patent assigned to plaintiff is also relevant to the present motion.

Design patent No. 259,671 ("D'671") and design patent No. 259,672 ("D'672") were issued to plaintiff on June 30, 1981, each claiming an "ornamental design" for a one-piece woman's swimsuit.2 Figures disclosing the patents' claims are reproduced below.3 While the two designs are similar, the design covered by the D'672 patent features a larger cut-out section in the back. Both of those design patents have 14 year terms and will expire on June 30, 1995.

Utility patent No. 4,306,317 ("'317"), issued to plaintiff on December 22, 1981, includes five drawings and two columns of descriptive text. The drawings, reproduced below, are identical to those shown in the D'671 and D'672 patents.4 The text of the '317 patent states that a frequent problem with one-piece swimsuits with open back sections is that "the lower portion of the suit has a tendency, in use, to separate slightly from the body of the swimmer which can decrease performance." The solution offered by the '317 patent is a continuous elastic edging that causes the suit to cling to the swimmer's body.5 The '317 patent was issued for a term of 17 years with an expiration date of December 22, 1998.

Design patent No. 261,822 ("D'822"), issued to plaintiff on November 17, 1981, covers an "ornamental design" for a one-piece woman's swimsuit which is shown in six figures, three of which are reproduced below.6 Among the prominent features of the design are a horizontal strip across the top of the front of the suit and in the back an oval opening in the back. The D'822 patent's 14-year term will expire on November 17, 1995.

Design patent No. 264,516 ("D'516"), issued to plaintiff on May 25, 1982, covers an "ornamental design" very similar to the D'822 patent. While the back of the suit in the D'516 patent also features an oval opening, the front does not have a horizontal stripe across the top; rather, the design includes two vertical stripes, one along each side of the suit.7 The D'516 patent was issued for a 14-year term with a May 25, 1996 expiration date.

While the present motion was pending, plaintiff filed terminal disclaimers with regard to the two patents disputed by defendants, the '317 patent and the '516 design patent. The first terminal disclaimer shortens the term of the '317 patent so that it will expire on June 30, 1995, the expiration date of both the D'671 and the D'672 patents. The second terminal disclaimer shortens the term of the D'516 patent so that it will expire on November 17, 1995, the expiration date of the D'822 patent.


Plaintiffs contend that summary judgment is generally inappropriate in patent cases, given the usual complex nature of such cases. See Moore Business Forms, Inc. v. Minnesota Mining & Manufacturing Co., 521 F.2d 1178, 1185 (2d Cir.1975). As in all summary judgment proceedings, the party seeking judgment in a patent action bears the burden of demonstrating that there are no genuine issues of material fact. Id. Even in the absence of disputed issues of fact, the party attacking a patent faces the further burden of overcoming the statutory presumption that a duly-issued patent is valid. 35 U.S.C. § 282. The moving party must establish the patent's invalidity by clear and convincing evidence, with all reasonable inferences drawn in favor of the party resisting the motion. Fearing Manufacturing Co. v. Hopkins Agricultural Chemical Co., 485 F.Supp. 985, 988 (W.D.Wis.1980).

1. Utility vs. Design Patents

Defendants argue that the '317 utility patent is invalid on the ground that the patent covers the same invention as the D'671 and D'672 design patents, thereby constituting "double patenting." While the patent laws allow a design patent and a utility patent to issue on the same device, each patent must claim a separate, distinct patentable invention. See In re Hargraves, 53 F.2d 900, 901 (C.C.P.A.1931). Evaluating claims of double patenting in the context of design and utility patents poses special difficulty, since it is "not easy to compare utility word claims with design picture claims in determining if the `same invention' is being claimed." Application of Swett, 451 F.2d 631, 635, 59 CCPA 726 (1971). The use of designs in a utility patent is merely illustrative, for the utility patent's scope is defined by the words of the claims. Thus, the mere fact that the utility patent at issue illustrates its claims with the designs covered by patents D'671 and D'672 is not dispositive. See Ropat Corp. v. McGraw-Edison Co., 535 F.2d 378, 381 (7th Cir.1976).

Courts have developed several tests for deciding whether two patents claim the same invention. Defendants, drawing on the analysis in Application of Thorington, 418 F.2d 528, 57 CCPA 759 (1969), favor the "general rule that double patenting exists if the design claimed in the first-to-issue design patent cannot be employed without infringing the utility patent." See Ropat Corp., supra, 535 F.2d at 381 n. 5. Defendants urge that Thorington represents the definitive "C.C.P.A. test."8 However, the Court of Customs and Patent Appeals, in decisions subsequent to Thorington, has set forth a more stringent standard for finding double patenting. "The test is whether one of the claims being compared could be literally infringed without literally infringing the other. If it could be, the claims do not define identically the same invention." Application of Avery, 518 F.2d 1228, 1232 (C.C.P.A.1975); Application of Vogel, 422 F.2d 438, 57 CCPA 920 (1970).

Under the Avery-Vogel test, double patenting in the design-utility context is established when the patents "cross-read." "To say that patents cross-read means that a device embodying the patentable design of the design patent must infringe the utility patent; and that a device embodying the patentable claims of the utility patent must infringe the design patent." Wahl v. Rexnord, Inc., 624 F.2d 1169, 1179 (3d Cir. 1980) (emphasis in original). Plaintiffs urge that the court adopt the "cross-reading" test. However, the court need not at this time decide whether the more stringent "cross-reading" test is applicable. It is enough for the purpose of the present motion to consider whether the design patents can be employed without infringing the utility patent.

It is true, as plaintiffs point out, that the D'671 and D'672 design patents claim only "ornamental designs" for swimsuits and do not specify any material, while the utility patent specifically claims a continuous edging made of elastic material. Plaintiffs argue that, in the absence of a specified material, the design patents may be employed without infringing the utility patent. However, "a patent can cover certain items not specifically claimed in the patent but necessarily implied by it." Wahl v. Rexnord, supra, at 1180. This is true for a design patent, as well as for a utility patent, since a design patent under section 171 protects "an article of manufacture" and not merely the design. See Ropat Corp., supra, at 382. In the present case, the article of manufacture recited in the design patent is a bathing suit. If a bathing suit embodying the design necessarily would have the continuous elastic edging claimed by the later-issued utility patent, the utility patent would be invalid by reason of double patenting.9

Defendants urge that the relationship between the patents at issue in the present case is indistinguishable from that in Thorington, in which a design patent for a fluorescent lamp was found to imply certain mechanical features claimed in a utility patent. The Thorington court held that "the evidence of record clearly establishes that the term `fluorescent lamp' has a welldefined meaning which necessarily includes those elements recited in the claims on appeal." 418 F.2d at 537. Contrary to defendants' contentions, however, the record of the present case does not afford a sufficient basis to find that the term "bathing suit" has a well-defined meaning which necessarily includes the continuous edging of elastic material that is claimed in the utility patent. Arguably, the suit illustrated in the design patents could be made to cling to the body at the legs and neck openings by means other than the continuous elastic band described in the design patent. Summary judgment is therefore inappropriate with regard to this issue.10

2. Design v. Design

Defendants' argument against the validity of the D'516 patent rests, in large part, on a different basis than their argument against the '317 patent. While defendants urge a "same invention-type" double patenting rejection of the '317 patent, they primarily contend...

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  • Bayer AG v. Barr Laboratories, Inc., 92 Civ. 0381 (WK).
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    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
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    ...modifications" of that invention. In re Zickendraht (1963) 319 F.2d 225, 232, 50 CCPA 1529. See also Adidas Fabrique v. Andmore Sportswear Corp. (S.D.N.Y.1984) 578 F.Supp. 1568, 1576 ("the major reason for the `obviousness-type' double patenting doctrine is to prevent the extension of the o......

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