Bentley v. Sunset House Distributing Corp.

• Decision Date: 25 March 1966
• Docket Number: No. 19453.,19453.
• Citation: 359 F.2d 140
• Parties: John W. BENTLEY, Appellant, v. SUNSET HOUSE DISTRIBUTING CORP., etc., Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

359 F.2d 140 (1966)

John W. BENTLEY, Appellant, v. SUNSET HOUSE DISTRIBUTING CORP., etc., Appellee.

No. 19453.

United States Court of Appeals Ninth Circuit.

March 25, 1966.

COPYRIGHT MATERIAL OMITTED

William A. Kemmel, Jr., Los Angeles, Cal., for appellant.

Freeman & Blum, Ivon B. Blum, Beverly Hills, Cal., for appellee.

Before BARNES, JERTBERG and DUNIWAY, Circuit Judges.

DUNIWAY, Circuit Judge:

Bentley brought this action for unfair competition and for patent infringement under 35 U.S.C. § 281, asking treble damages, costs, and attorney's fees. The jury returned a general verdict for Bentley, assessing his damages at $4,581.60. The court granted defendant Sunset House's motion for judgment notwithstanding the verdict (Rule 50(c), F.R.Civ.P.), and also granted, conditionally, its motion for a new trial. Bentley appeals.

A model of the patented device, a meatball mold, was first made some time in 1956. As finally refined, it is a scissor-like instrument whose two handles, affixed together at about midpoint with a rivet, terminate at the other end in facing hemispherical cups which close together to make a sphere. The edges of the cups taper to a cutting edge. Each handle is attached to the outer wall of its cup at about midpoint between edge and apex to avoid a build-up of meat between the handles and to make cleaning easier. In order that the meatball will be firm enough to hold together throughout the cooking and serving process, yet not so firm as to be difficult to eat, a hole is cut in the apex of each cup, of a size that allows the escape during compression of just the right quantity of excess meat and of air. Additionally this hole lets air back in when the cups are opened, easing removal of the finished meatball from the molds by eliminating suction.

Bentley saw commercial possibilities in his device, and, in the summer of 1957 instructed his attorney to file an application for a mechanical patent. That fall he investigated with domestic manufacturers the cost of mass production of the device. He found the cost prohibitively high, and got in touch with three importers to determine the cost of Japanese manufacture. One quoted too high a cost and another wanted too high a royalty. The third, Westwood Import Company, responded to Bentley's inquiry after his application for a mechanical patent was finally filed on January 10, 1958. (He applied for a design patent on February 19, 1959.)

In November of 1958, while license negotiations were in progress, Bentley suggested to Westwood that procuring a Japanese patent would prevent unauthorized production of the mold in that country, and was informed that Westwood had caused an application for a Japanese patent (later discovered to be a design patent) to be filed some "six or seven months" before. In December, 1958, Bentley granted Westwood an exclusive license to import and sell the molds, in consideration of a royalty. This arrangement was terminated in early 1960 after Westwood discovered that closely similar or identical molds were being sold by two other importers. Bentley realized a total royalty from Westwood of $32.01 from sales by that company over a 13-month period.

Upon the issue of Bentley's patents — U. S. Design Patent No. 187,748, issued April 26, 1960, and U. S. Patent No. 2,957,199, issued October 25, 1960, which we sometimes refer to hereafter as the "design patent" and the "mechanical patent," respectively — he personally experimented with import and promotion of the mold, making his first public distribution of patent-numbered molds on March 17, 1961. Sunset House commenced advertising and sale of identical, unmarked molds the following month, and was notified of Bentley's patent and claim of infringment in a letter received May 9, 1961. Sunset House continued to sell the mold, and by mid-November, 1963, had sold about 45,000 units.

On appeal, Bentley claims in substance that the court below erred:

(1) in granting the motions for judgment n. o. v. and for a new trial;

(2) in holding his mechanical patent invalid;

(3) in holding his design patent invalid;

(4) in holding that Sunset House did not compete unfairly with Bentley with respect to the mold or advertising matter, and

(5) in awarding costs of suit to Sunset House.

1. Judgment notwithstanding the verdict.

Bentley asserts that the district court's grant of judgment n. o. v. effectively deprives him of the jury trial to which the Constitution entitles him.

The appropriate accommodation of the constitutional guarantee of jury trial and the necessity of ensuring that the constitutional and statutory standards of patentability are met in particular cases has been a subject of much debate and exploration in the cases. But we think that debate was foreclosed by Graham v. John Deere Co., 86 S.Ct. 684, decided February 21, 1966. There it was held that "the ultimate question of patent validity is one of law." This, in substance, has long been the position of this court, as Judge Pope noted in his concurring opinion in Bergman v. Aluminum Lock Shingle Corp., 9 Cir., 1957, 251 F.2d 801, 809-813. See e. g., Griffith Rubber Mills v. Hoffar, 9 Cir., 1963, 313 F.2d 1. It is the position adopted by other circuits, see e. g., Hygienic Specialties Co. v. H. G. Salzman, Inc., 2 Cir., 1962, 302 F.2d 614, 617, n. 6; Packwood v. Briggs & Stratton Corp., 3 Cir., 1952, 195 F.2d 971, 973; Monroe Auto Equip. Co. v. Heckethorne Mfg. & Supply Co., 6 Cir., 1964, 332 F.2d 406, 412. If the patents are invalid as a matter of law, the court not only had the power, but it was its duty, to grant the motion for judgment n. o. v. Himes v. Chadwick, 9 Cir., 1952, 199 F.2d 100; Packwood v. Briggs & Stratton Corp., supra; see Griffith Rubber Mills v. Hoffar, supra; Berkeley Pump Co. v. Jacuzzi Bros., Inc., 9 Cir., 1954, 214 F.2d 785.

2. Validity of the mechanical patent.

The basic standard of patentability is established by Art. I, § 8, cl. 8 of the Constitution, Graham v. John Deere Co., supra. It is particularized in 35 U.S.C. §§ 101-103, which define the three basic requirements of novelty, utility, and non-obviousness. It may be conceded arguendo that the mold here in suit is novel and useful. But is it "non-obvious"? Section 103 provides:

"§ 103. Conditions for patentability; non-obvious subject matter.

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."

Whether a patent meets the standard of non-obviousness enunciated in § 103 depends upon the resolution of

"several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., * * * may have relevancy." Graham v. John Deere Co., supra.

We are told that these requirements are to be strictly observed and are reminded that, while the 1952 revision of § 103 does not change the requisite standard of innovation originally embraced in Hotchkiss v. Greenwood, 1850, 52 U.S. (11 How.) 248, 13 L.Ed. 683,

"technology * * * has advanced — and with remarkable rapidity in the last 50 years. Moreover, the ambit of applicable art in given fields of science has widened by disciplines unheard of a half-century ago. It is but an evenhanded application to require those persons granted the benefit of a patent monopoly be charged with an awareness of these changed conditions. The same is true of the less technical, but still useful arts. He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office." Ibid.

With the foregoing in mind, we examine the mechanical patent in suit, considering the key characteristics of prior art patents cited when it was prosecuted in the Patent Office.

The Prior Art.

In prosecuting his claim through the patent office, Bentley relied upon five patent references, Allen (1865, #46,319), May (1873, #141,882), Whitman (1927, #1,639,122), Little (1936, Des. #100,705), and Dirks (1910, Germany, #218,836), and referred to Jackson (1935, #2,003,197) and Wosse (1957, #2,785,641) to show the state of the art. At trial, Landstra (1924 #1,515,125), Wiatt-Pickering (1890, #436,818), and Dow (1926, #1,584,757) were cited as well.

Without going into detail, we think that the following is a fair summary of the relevant disclosures in these patents, all but one of which covers a food mold. Opposing half molds of various shapes, most frequently hemispheres, appear in all of them. Scissor handles (or their analogues, plier handles) are found in six, vents in two and vent substitutes in another two, cutting edges in two and scooping edges in two. The question becomes whether these characteristics are sufficiently different from those embodied in Bentley's device to make it patentable.

The Obviousness of the Differences.

All of the elements of Bentley's mold appear in two or more examples of the prior art. He himself testified that he did not claim total originality as to any single aspect of his device. The most strikingly different features of his mold are (1) its peculiar combination of ingredients and (2) the size and placement of the vents.

In assessing the patentability of combination patents, we are to apply a "severe test," whether "the whole in some way exceeds the sum of its parts" to...