Allen v. Ideal Products, Inc.

• Decision Date: 11 June 1969
• Docket Number: Civ. A. No. 68-332.
• Citation: 300 F. Supp. 349
• Parties: Robert E. ALLEN, d.b.a. Bob Allen's Gun Club Sportswear, Plaintiff, v. IDEAL PRODUCTS, INC. and Calvin Bean, Defendants.
• Court: U.S. District Court — Eastern District of Pennsylvania

300 F. Supp. 349

Robert E. ALLEN, d.b.a. Bob Allen's Gun Club Sportswear, Plaintiff, v. IDEAL PRODUCTS, INC. and Calvin Bean, Defendants.

Civ. A. No. 68-332.

United States District Court W. D. Pennsylvania.

June 11, 1969.

Russell D. Orkin, Webb, Burden, Robinson & Webb, Pittsburgh, Pa., for plaintiff.

William B. Jaspert, Pittsburgh, Pa., for defendants.

OPINION

DUMBAULD, District Judge.

Before us for disposition is a motion by defendants for summary judgment attacking plaintiff's claim for infringement of a patent relating to a device on a hunting jacket for absorbing the recoil of the gun; together with a motion by plaintiff to dismiss defendants' counterclaim charging plaintiff with an antitrust violation by virtue of attempted misuse of a patent beyond the scope of its monopoly.

In limine at the request of the Court the parties briefed the question whether in view of Fashion Originators' Guild of America v. F.T.C., 312 U.S. 457, 61 S.Ct. 703, 85 L.Ed. 949 (1940), there could exist such a thing as a patent protecting the design of a garment. Both parties agree that the Court's scruples on this point are unfounded; at least many patents have been granted in that field. In that case, it will be remembered, the Supreme Court condemned as "private government" a combination in the garment industry which sought to combat design piracy (312 U.S. at 465, 61 S.Ct. 703). There would apparently have been no occasion for such self-help if legal protection had been available by means of the patent or copyright laws for the "original and distinctive designs" created by members of the association and pirated by the copyists at whom the combination was directed.

Perhaps one sufficient distinction is that in the Fashion Originators case the designs involved were merely decorative or ornamental, created to establish a mode or fashion; whereas in the case at bar we are dealing with a functional or utilitarian type of design, intended to protect the sportsman's body against the recoil of his weapon.

Turning then to the issues that are controlling, we consider the application of the patent laws. In this connection, it must never be forgotten that the primary policy of the patent laws is to promote invention for the benefit of the public. Private gain is secondary. Pennock v. Dialogue, 2 Pet. 1, 7 L.Ed. 327 (1829); Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 510-511, 37 S.Ct. 416, 61 L.Ed. 871 (1917); Mercoid Corp. v. Mid-Continent Inv. Co., 320 U.S. 661, 665, 64 S.Ct. 268, 88 L.Ed. 376 (1944); Mazer v. Stein, 347 U.S. 201, 219, 74 S.Ct. 460, 98 L.Ed. 630 (1954); Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 330-331, 65 S.Ct. 1143, 89 L.Ed. 1644 (1945); Dumbauld, The Constitution of the United States (1964) 153-154. A valid patent must add to, not detract from, the state of the prior art. As stated in Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950): "The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans." Hence it is a public service to strike down an invalid patent, which is in truth a trespass upon the public domain, as Justice Douglas observed in Automatic Radio Mfg. Co. v. Hazeltine Research, 339 U.S. 827, 840, 70 S.Ct. 894, 94 L.Ed. 1312 (1950). The very power of Congress to grant a patent is limited and delineated by the purpose proclaimed in the constitutional grant itself. The power is one "To promote the Progress of Science and useful Arts"; the "exclusive Right" conferred by the patent is merely the means of accomplishing the intended result. Ibid., 836-837, 70 S.Ct. 899; Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 154-156, 71 S.Ct. 127, 95 L.Ed. 162 (1950); U.S.Const. Art. I, sec. 8, cl. 8.

"It follows, from the language used in the Constitution, limiting patentability to inventions which in fact contribute to the `progress' of science that every case involving the validity of a patent presents a constitutional question. Hence the Supreme Court of the United States is often required to devote its time and effort to determinations involving minute questions of fact with respect to the patentability of trivial gadgets."¹

It follows also, from these basic policies, that commercial success alone, without the requisite invention and novelty, will not establish patentability. Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 153, 71 S.Ct. 127, 95 L.Ed. 162 (1950). It further follows that the mere discovery of a phenomenon or law of nature is not patentable. Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948).

It must also be borne in mind that under the 1952 amendment the requirement of novelty is no longer to be interpreted, as in the days of Thurman Arnold, as requiring a "flash of genius".² 35 U.S.C. § 103 now states "Patentability shall not be negatived by the manner in which the invention was made." A computerized search, or mere methodical exhaustion of alternatives, might now suffice. Cf. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335, 65 S.Ct. 1143, 89 L.Ed. 1644 (1945). An accidental discovery is now patentable. Gagnier Fibre Products Co. v. Fourslides, Inc., 112 F.Supp. 926, 929 (E.D. Mich.S.D., 1953). At the same time, 35 U.S.C. 103, as interpreted in the leading case of Graham v. John Deere Co., 383 U.S. 1, 16-17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), added a new requirement of "non-obviousness". This requirement, it seems clear, did not lower the level of inventiveness required. If anything, it increased it by making a statutory requisite of criteria theretofore embodied only in judicial decisions.

In the light of these doctrines we examine the facts shown in the case at bar. The Allen patent, No. 2,948,899, issued August 16, 1960, upon which plaintiff relied, has two claims. The second is merely for the garment described in Claim 1, which describes a "wrinkle free gun butt pad for shooting garment". The claimant concedes that previous efforts to prevent wrinkling had been made by stitching or quilting the pad to the garment. Allen's claim is to the use of a resilient pad which is supposed to exert an anti-wrinkle force on the gun butt bearing element and the pocket in which the pad is inserted.³

The two principal advantages claimed are that the pad is resilient and that it is removable. Thus the garment can be cleaned more readily, and pads of varying thickness (or no pad at all) can be used at the sportman's option.

We turn now to the prior art as disclosed in earlier patents, and the history of the Allen application in the Patent Office. Defendants argue that plaintiff amended out during these proceedings the features which defendants are now charged with infringing; in other words that plaintiff's action is subject to the defense of "file wrapper estoppel". Leggett v. Avery, 101 U.S. 256, 259, 25 L.Ed. 865 (1879).

Allen filed his application July 18, 1957. On November 19, 1957, the Examiner rejected it, referring to prior patents by Evans (No. 2,302,368) and Mulvey (No. 2,247,961). Mulvey dealt with a pneumatic pad for football players, to be inserted in a pocket flap attached on the inside of the pants. Evans used a latex pad glued or cemented to the outside of the shooting jacket.

Plaintiff's attorney then argued that Evans had emphasized the preferability of a securely fastened pad, and thus pointed in a direction different from the removable pad claimed by Allen.

The Examiner on October 10, 1958, again rejected Allen's amended application, referring also to the patents of Petmecky (No. 849,266) and White (No. 727,243). Petmecky, in 1907, described a resilient or "cushioning" pad to be inserted on the inside of the garment at a point directly opposite to the resting place of the gun butt. His pad could either be sewed or otherwise permanently attached to the inside of the garment, but preferably was attached by snapfasteners ("spring buttons and sockets").

White's knee protector (1903) was a pad removably inserted in a pocket on the outside of the trousers at the knee.

Counsel again argued that Evans did not use a removable pad, and that a pad fastened by snaps as by Petmecky could not exert a straightening or anti-wrinkle effect.

A different Examiner rejected this amended application...