Aileen Mills Co. v. Ojay Mills, Incorporated

• Decision Date: 24 October 1960
• Parties: AILEEN MILLS CO., Inc. and Morgan-Jones, Inc., Plaintiffs, v. OJAY MILLS, INCORPORATED, and Ostow & Jacobs, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

188 F. Supp. 138

AILEEN MILLS CO., Inc. and Morgan-Jones, Inc., Plaintiffs, v. OJAY MILLS, INCORPORATED, and Ostow & Jacobs, Inc., Defendants.

United States District Court S. D. New York.

October 24, 1960.

Burke & Burke, New York City, for plaintiffs, George I. Harris, New York City, of counsel, and Eaton, Bell, Hunt & Seltzer, Charlotte, N. C., Donald M. Seltzer, Charlotte, N. C., of counsel.

Charles Sonnenreich, New York City, for defendants.

LEVET, District Judge.

Defendants moved for summary judgment to dismiss the cause of action for alleged patent infringement of plaintiffs' Design Patent No. 181,148, covering a textile fabric or similar article. Defendants claim that the bedspreads manufactured and sold by them do not infringe upon the design of the fabric illustrated and claimed in the patent in suit. This is a non-jury case.

The defendants' contentions are essentially as follows:

(1) The fabric illustrated in the patent drawings or print of the swatch submitted by the applicant (plaintiffs here) consists of a series of cut loops, flat in appearance in parallel rows, spaced between longitudinally extending rows of yarn. The examiner stated that "it appears that the elements arranged in vertical rows between the broken lines are tufts of yarn secured by weft-wise stitches on the body of the fabric." A photostatic copy of plaintiffs' patented design is shown at the end of this opinion (see Figure A).

(2) The plaintiffs' fabric, as manufactured and sold (Exhibit A attached to the complaint), is not the same as that shown on the design patent as filed. Exhibit A, instead of revealing cut loops between the longitudinally extending arms, shows longitudinally extending yarns between parallel rows of tufts or balls of yarn. (See Figure B appended at the end of this opinion.)

(3) The defendants' fabric (Exhibit B attached to the complaint), alleged to infringe upon that of plaintiffs, consists, it is true, of the same type of fabric as plaintiffs' (Exhibit A), but it differs, as does that of plaintiffs, from the design fabric patented, as explained in (2) above. A photostatic copy of defendants' fabric is shown at the end of this opinion (Figure C).

(4) The fabric design used by defendants is not subject to patent and was not patented by plaintiffs.

The claims of plaintiffs urged to sustain the validity of the patent are as follows:

(1) The distinctive feature of the design, as clearly shown in the patent and its file history, is the combination of longitudinally extending parallel rows of tufts with alternating longitudinally extending parallel metallic yarns.

(2) Prior to this fabric there was no bedspread on the market combining the distinctive characteristics of parallel rows of tufts with parallel metallic yarns alternating with the rows of tufts.

(Plaintiffs concede that plain-tufted bedspreads, without metallic yarns, have been known for years and that the patent in suit does not disclose or claim such a bedspread.)

(3) Both plaintiffs' fabric and defendants' fabric, annexed to the complaint as Exhibits A and B, have lines of metallic fabric extending between the tufts.

(4) The plaintiffs' fabric before washing is identical in the cut tufts with the designed fabric as patented. When washed, the same fabric appears as in Exhibit A attached to the complaint. (A photograph of plaintiffs' fabric, washed and unwashed, appears in Exhibit A attached to A. H. Grant's opposing affidavit.)

In opposing the motion, plaintiffs also contend that issues of fact remain as to the infringement action and that the unfair competition action is closely intertwined and inseparable.

The defendants' position on this motion is simple. David Ostow states in his affidavit of September 12, 1960:

(1) "The only basis for defendants' motion is that the bedspreads manufactured and sold by them do not infringe the design of the fabric covered by the patent in suit in that the two designs are entirely dissimilar." (pp. 2-3)

(Thus the question of the validity of the design patent itself is not involved in this motion, although raised in defendants' answer by way of defense, but not by counterclaim.)

(2) "The granting of the motion for summary judgment will eliminate from the complaint the charge of patent infringement and leave for determination the question of unfair competition in the sale of finished bedspreads." (p. 3)

1. Motion for Summary Judgment

This motion for partial summary judgment appears valid. See Rule 56(b), Federal Rules of Civil Procedure, 28 U.S. C.A. Under Rule 56(d), the duty then falls upon the court to specify the remaining issues.

Where a defendant moves for summary judgment in a patent infringement case on the ground that he has not infringed the patent involved, the issue of invalidity of the patent itself will be disregarded. Electrical Fittings Corp. v. Thomas & Betts Co., 1939, 307 U.S. 241, 59 S.Ct. 860, 83 L.Ed. 1263; Duplex Electric Co. v. Padua Hold-Up Alarm Corporation, 2 Cir., 1929, 30 F.2d 344; Rubinstein v. Silex Co., D.C.S.D.N.Y. 1947, 73 F.Supp. 336.

The issue of infringement, although coupled with a charge involving unfair competition, may be separately determined upon summary judgment. Meikle v. Timken-Detroit Axle Co., D.C. E.D.Mich.S.D.1942, 44 F.Supp. 460; Berghane v. Radio Corporation of America, D.C.D.Del.1945, 4 F.R.D. 446; E. I. Du Pont De Nemours & Co. v. United States Camo Corp., D.C.W.D.Mo.W.D. 1956, 19 F.R.D. 495.

In the Du Pont case, supra, at page 498, R. Jasper Smith, District Judge, stated:

"* * * The partial, interlocutory summary adjudication is merely a pretrial determination that certain issues are considered established for the trial of the case, and is similar to the preliminary order under Rule 16. Its purpose, like that of the pre-trial order, is to expedite litigation. See Moore's Federal Practice, Vol. 6, Section 56.20(3), Part 4."

The plaintiffs assert that the causes of action for patent infringement and unfair competition are totally inter-related factually; that the same evidence would be offered on both issues; that it is the practice in this district to deny such motions for summary judgment upon the ground that no expense is saved. With this I am forced to disagree. Granting or withholding a summary judgment is never based solely upon the factor of saving time or expense.

In Reynolds Pen Company v. W. A. Sheaffer Pen Company, D.C.S.D.N.Y. 1958, 22 F.R.D. 502, 504, Judge Bryan of this court declared:

"The issue on a motion for summary judgment is not what determination of fact the court would make if it were called upon to decide the case on the papers before it. The question is whether or not there are any issues of fact to be determined. If so, they cannot be determined on the motion but must be tried, in this case to a court and jury. Colby v. Klune, 2 Cir., 178 F. 2d 872; Arnstein v. Porter, 2 Cir., 154 F.2d 464; Doehler Metal Furniture Co. v. United States, 2 Cir., 149 F.2d 130."

As previously stated by Judge Rifkind in Rubinstein v. Silex Co., D.C.S.D.N.Y. 1947, 73 F.Supp. 336:

"* * * The authorities are in accord that, absent triable issues of fact, a motion for summary judgment should be granted in patent cases. Brown v. Ford Motor Co., D.C.E.D.Mich.1944, 57 F.Supp. 825; S. R. Leon, Inc. v. Parfums Schiaparelli, D.C.S.D.N.Y.1940, 35 F.Supp. 641; Gasifier Mfg. Co. v. Ford Motor Co., D.C.E.D.Mo.1939, 1 F.R.D. 10. In any event, expressions of doubt as to the propriety of summary procedure are found in patent cases dealing with adjudications of validity, not infringement."

2. Patent Infringement

Design patents are presumably based on what the application therefor discloses its appearance to be. Application of Lurelle Guild, U.S.Ct. of Customs & Patent Appeals, 1953, 204 F.2d 700. Here, Judge Cole wrote in part:

"It is a fundamental principle of patent law that the patentability of a design application is to be tested in the light of its appearance as a whole. Bearing in mind that the law applicable to design patents is not different from that applicable to other patents, the determinative factor relative to the issue of anticipation is founded in identity or substantial similarity of appearances. (at page 703.)

* * * * *

"* * * Design patents are presumably based on what the application therefor discloses its appearance to be. While, as indicated, the applicant asks that this rule be not applied in this instance because, as evidenced by the proof submitted by him, the McKay process would not actually produce shingles like those shown in the drawings. We agree thoroughly with the examiner and Board of Appeals in rejecting this contention by applicant." (at page 704.)

Circuit Judge Rogers in Ashley v. Weeks-Numan Co., 2 Cir., 1915, 220 F. 899, 901 declared that: "In a design patent the appearance is the subject-matter of the patent * * *. The patentability of a design is determined by its appeal to the eyes, and not by the presence or absence of a mechanical function."

However, "a patentee's grant of privilege consists only in that which is both described and claimed, while drawings assist the specification, but do not control. Fulton Co. v. Powers Co. (C.C. A.) 263 Fed. 578." Whiting Mfg. Co. v. Alvin Silver Co., 2 Cir., 1922, 283 F. 75, 79, certiorari denied 1922, 260 U.S. 731, 43 S.Ct. 93, 67 L.Ed. 486.

It is thus fundamental that the patent grant consists only of that which is described and claimed. Whiting Mfg. Co. v. Alvin Silver Co., supra. The present plaintiffs' patent claim was for the "ornamental design for a textile fabric or similar article, as shown." No description in words appears in the patent application. In a communication by an examiner after submission of the fabric swatch from which the patent print was made, mentioned above, he noted that "it appears that the elements arranged in vertical rows between the broken lines are tufts of yarn secured by weft-wise stitches on the body of the fabric."

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