Associated Plastics Companies v. Gits Molding Corp., 9963.

• Decision Date: 19 June 1950
• Docket Number: No. 9963.,9963.
• Citation: 182 F.2d 1000
• Parties: ASSOCIATED PLASTICS COMPANIES, Inc. v. GITS MOLDING CORPORATION et al.
• Court: U.S. Court of Appeals — Seventh Circuit

182 F.2d 1000 (1950)

ASSOCIATED PLASTICS COMPANIES, Inc. v. GITS MOLDING CORPORATION et al.

No. 9963.

United States Court of Appeals, Seventh Circuit.

June 19, 1950.

COPYRIGHT MATERIAL OMITTED

Bertram William Coltman, Robert W. Poore, Chicago, Ill. (Thiess, Olson & Mecklenburger, Chicago, Ill., of counsel), for appellant.

Richard Russell Wolfe, Alwin F. Pitzner, Jarrett Ross Clark, all of Chicago, Ill. (Carlson, Pitzner, Hubbard & Wolfe, Chicago, Ill., of counsel), for appellee.

Before KERNER, DUFFY, and SWAIM, Circuit Judges.

KERNER, Circuit Judge.

By this appeal defendants seek to reverse a judgment entered in a declaratory judgment action. The relief sought by plaintiff was an adjudication of invalidity of Gits' Patents Nos. 2,433,210 and 2,433,211 and Patent No. D-137,122, and for damages for unfair competition. Defendants answered and filed a counterclaim asserting the validity of the patents and charging plaintiff with infringement of the design patent and the Gits patents by manufacturing and selling ice cube trays embodying the claimed inventions patented therein. The District Court entered judgment adjudging all three of the patents invalid and void, retained jurisdiction of plaintiff's claim for damages for unfair competition, and dismissed defendants' counterclaim. The court also entered judgment that plaintiff recover its reasonable attorneys' fees incident to preparing for trial, and trial, of the issue of validity. Defendants appeal from all parts of the judgment except that part holding Patent No. 2,433,211 invalid.

On August 29, 1947, when plaintiff commenced its action against defendants, only the design patent had issued, and Gits' application, filed February 2, 1945, for Patent No. 2,433,210, issued December 23, 1947, was still pending in the Patent Office. This patent, as well as the design patent, relates to ice freezing trays of thermoplastic material adapted for use in refrigerators for freezing a plurality of ice cubes.

The specification in No. 2,433,210 states that an object of the invention is to provide an improved, simple and efficient form of structure for freezing trays, which may be advantageously made of a thermoplastic material capable of being molded in a single operation and providing maximum heat conducting surfaces for each compartment in which an ice cube is frozen. A further object is to provide a freezing tray of improved structure which may be made of a thermoplastic material that tends to retard frost formation upon the exposed outer surfaces and to which the ice does not necessarily tend to adhere so that the ice cubes may be readily dislodged. Another purpose is to provide an improved, simple and efficient form of thermoplastic structure which may be twisted slightly to loosen the ice cubes in the compartment and which is provided with a simple means of limiting the twisting action whereby to prevent permanent distortion of the tray.

The specification also states that the ice cube or freezing tray comprises a plurality of individual compartments which may be arranged in any cell-like pattern and may be of any desirable shape. The upper portion of the side walls merge into what may be called an upper wall or ledge that extends about all sides of the tray as well as between rows longitudinally of the tray and crosswise between adjacent compartments of each row. The side walls taper inwardly from top to bottom to provide air spaces between the compartments. The upper ledges are described as functioning to transmit the torsional twist through the entire body of the tray, and the reinforcing ribs, shown in the patent between adjacent compartments, are said to serve a dual function of tending to limit the torsional twist and distributing the torsional twist to flex the top and bottom side walls individually.

The ice tray shown in the design patent consists of a group of individual tapered cells or cube compartments, arranged in two rows and joined together at their upper edges to form a flat top. A curved ledge at one end of the top serves as a handle. The ledge merges with the plane of the top of the tray, and serves to draw the structure together. Viewed from any side, the angle between the adjacent side walls of the cells or compartments gives a sawtoothed or comb effect to the side.

Claims 1, 2, and 4 to 12 inclusive of No. 2,433,210 are involved. Claims 11 and 12 are typical and appear in foot note ¹. Defendants in their brief say: "The claims of Gits are not directed to the mere use of thermoplastic material in making an ice cube tray" but they assert that the gist of the alleged invention is a new type of ice cube tray that, by a slight torsional twist, will release one or any number of cubes by a popping-out action, in a whole dry state without requiring any melting before release, as by running water over the tray or by letting it remain in the open for some time before using.

Plaintiff contends that there is no novelty in the inventions. It says that every element claimed to exist in Gits' disclosure is found in the prior art, and if Gits presented any new element, it amounted to nothing more than mechanical skill.

On the question of novelty and invention, the trial judge heard all of the evidence adduced by the parties. He filed a memorandum opinion and made specific findings of fact based upon the relevant prior art² and the conflicting oral testimony of witnesses. He found that the ice cube tray shown in the design patent was as plain in appearance as the familiar egg poacher or muffin tin, possessing no artistic merit and wholly lacking in originality. Its shape and configuration were wholly utilitarian. It failed to display the artistic merit required to support a valid design patent.

To entitle an applicant to a design patent there must be originality and the exercise of the inventive faculty. Mere mechanical skill, whether of the artisan or of the artist, is insufficient. Battery Patents Corp. v. Chicago Cycle Supply Co., 7 Cir., 111 F.2d 861. More is required for a valid design patent than that the design be new and pleasing enough to catch the trade; it must be the product of invention, by which is meant that conception of the design must demand some exceptional talent beyond the skill of the ordinary designer. Neufeld-Furst & Co. v. Jay-Day Frocks, 2 Cir., 112 F.2d 715. See also S. Dresner & Son v. Doppelt, 7 Cir., 120 F.2d 50; Zangerle & Peterson Co. v. Venice Furniture Novelty Mfg. Co., 7 Cir., 133 F.2d 266; General Time Instruments Corp. v. United States Time Corp., 2 Cir., 165 F.2d 853; Capex Co. v. Swartz, 7 Cir., 166 F.2d 5; and Hueter v. Compco Corp., 7 Cir., 179 F. 2d 416.

With these principles in mind, we have examined the record. It discloses that various types of ice cube trays have been used for years, and that these trays have one or more of the elements or features of the tray pictured in the design patent, and hence the court did not err in finding that the tray lacked originality, that it possessed no artistic merit, and failed to display the artistic merit required to support a valid design patent.

We now consider Patent No. 2,433,210. The fundamental question in determining the issue of validity is the extent of the contribution or advance made by the device or product covered by the patent.

The trial judge stated that both parties had refrigerators in court and made demonstrations of trays filled with ice, and he found "that on twisting the trays * * * all of the cubes would pop out except those cubes at each end of the tray where it was necessary to grasp the tray to give it a twist. The twisting had absolutely no effect on those end cubes and no retractile force popped them out. Those end cubes could be removed by turning the tray sideways and giving it a transverse torsional twist, but not otherwise."

The court also found that the provision of the ribs, such as are shown in the ice tray, was a simple mechanical expedient for reenforcement normally to be expected of a mechanic skilled in molding plastic articles; that Gits knew nothing of the characteristics of the plastics referred to in the patent; that polyethylene or polythene are plastics having desirable qualities for ice cube trays available to anyone from at least two sources, and that one of the manufacturers thereof, more than a year prior to September 5, 1947, published an advertising pamphlet which expressly recommended polyethylene or polythene for use in making ice cube trays that might be made of plastic; that so far as the ice cube trays of the parties are...