Bergstrom v. Sears, Roebuck and Co., Civ. No. 3-75-248.

• Decision Date: 17 August 1978
• Docket Number: Civ. No. 3-75-248.
• Citation: 457 F. Supp. 213
• Parties: Theodore R. BERGSTROM and Thermograte Enterprises, Inc., Plaintiffs, v. SEARS, ROEBUCK AND CO. and Cardinal Foundry & Supply Company, a division of Production Experts, Inc., Defendants.
• Court: U.S. District Court — District of Minnesota

457 F. Supp. 213

Theodore R. BERGSTROM and Thermograte Enterprises, Inc., Plaintiffs, v. SEARS, ROEBUCK AND CO. and Cardinal Foundry & Supply Company, a division of Production Experts, Inc., Defendants.

Civ. No. 3-75-248.

United States District Court, D. Minnesota, Third Division.

August 17, 1978.

COPYRIGHT MATERIAL OMITTED

John D. Gould, Merchant, Gould, Smith, Edell, Welter & Schmidt, P. A., Douglas J. Williams, Minneapolis, Minn., for plaintiffs.

Charles E. Steffey, Robert O. Vidas, Schroeder, Siegfried, Ryan, Vidas & Steffey, Minneapolis, Minn., for defendants.

FINDINGS OF FACT

CONCLUSIONS OF LAW

ORDER FOR JUDGMENT

MacLAUGHLIN, District Judge.

The sole issue before the Court is whether or not United States Design Patent No. 228,728 is invalid pursuant to 35 U.S.C. § 102(b) because the ornamental design subject matter of the patent was on sale, in public use, or described in a printed publication more than one year prior to the filing date of the patent.

This Court, having heard and considered all of the evidence presented at trial, as well as the pleadings and the extensive pre-trial and post-trial memoranda of counsel, makes the following Findings of Fact and Conclusions of Law:

FINDINGS OF FACT

1. Theodore R. Bergstrom, plaintiff, is an individual and a resident of the State of Minnesota. During the pertinent time frame of this litigation, including the period from 1970 to the date of trial, Mr. Bergstrom resided at 51 Iona Lane, St. Paul, Minnesota.

2. Thermograte Enterprises, Inc., plaintiff, is a Minnesota corporation having its place of business at 300 Atwater, St. Paul, Minnesota, and Theodore R. Bergstrom is its president.

3. Cardinal Foundry & Supply Company, defendant, is an unincorporated division of Production Experts, Inc., having its place of business at Cleveland, Ohio; and it is the manufacturer of the alleged infringing products.

4. Sears, Roebuck & Co., defendant, is a New York corporation; and it is a retailer of the alleged infringing products.

5. Theodore R. Bergstrom is the named patentee and owner of United States Design Patent No. 228,728, which is for a design of a tubular fireplace grate. U. S. Design Patent No. 228,728 issued on October 23, 1973, for a term of 14 years. The application for this patent was filed December 14, 1971.

6. Defendants contend that U. S. Design Patent No. 228,728 is invalid pursuant to 35 U.S.C. § 102(b) because the ornamental design subject matter of the patent was (1) on sale, and/or (2) in public use, and/or (3) described in a printed publication more than one year before the December 14, 1971, filing date of the patent. Thus, the "critical date" for the Bergstrom Design Patent is December 14, 1970.

7. Plaintiff Theodore R. Bergstrom had considered the problem of the inefficiency of fireplaces for a number of years. In late 1969 or early 1970 he bent an electrical conduit generally into the configuration of the letter "C" and wired this tube to a standard fireplace grate in his basement fireplace. Mr. Bergstrom observed and tested this structure and determined that cool air was drawn into the bottom of the tube and was heated by the fire and expelled from the top of the tube at elevated temperatures into the room.

8. In January of 1970, Mr. Bergstrom prepared a sketch of a "single-bend" tube design, and he ordered ten tubes from Metal-Matic, Inc. of this design. In February of 1970, Mr. Bergstrom purchased steel strap for assembly of the tubes of the single-bend tube design into grates. Mr. Bergstrom assembled a prototype unit on or about March 1, 1970.

9. The prototype assembled on or about March 1, 1970, by Theodore R. Bergstrom utilized a separate steel strap attached to the lower part of the grate as a log retaining strap and it had legs of unequal length bolted to the tubes. Mr. Bergstrom tested the prototype and determined that it operated very well.

10. At this time, March of 1970, Mr. Bergstrom was a metallurgical engineer employed by the 3M Company in St. Paul, Minnesota. He was the inventor of several 3M patents, and he was familiar with the process used by 3M inventors to record, witness, and document inventions.

11. Mr. Bergstrom, on or about March 15, 1970, invited Mr. and Mrs. Jack Allison, who are close personal friends, and Mr. Robert Sternal, a neighbor and close friend, to his home, and they witnessed what Mr. Bergstrom considered to be his invention as of that date. The design of the device witnessed by Mr. Bergstrom's friends was the single-bend prototype using the tube design.

12. Mr. Bergstrom prepared two documents recording the circumstances surrounding the development of the single-bend prototype and the witnessing of the device by his close personal friends. The first document was mailed by Mr. Bergstrom to himself by certified mail on March 25, 1970. The second document was signed by Mr. Bergstrom and Mr. Robert Sternal, Mr. Bergstrom's next-door neighbor and friend, on March 25, 1970, and was notarized at that time.

13. As of March, 1970, Mr. Bergstrom had the one operational prototype of his single-bend invention, but he was not satisfied with the design and appearance of it.

14. In the latter part of March, 1970, Mr. Bergstrom sketched two additional design configurations for tubes and he ordered six tubes of each design from Metal-Matic, Inc. One design was characterized by three bends in the tubes. (Plaintiff's Exhibit 9). The other design was characterized by two bends in the tubes, plus a third slight bend resulting in a slight incline of the tubes at the lower end of the "C" configuration. (Plaintiff's Exhibit 10).

15. Mr. Bergstrom assembled the two sets of tube designs in April of 1970. He tested both structures in the fireplace located in the basement of his home at 51 Iona Lane, St. Paul, Minnesota. Mr. Bergstrom chose as his preferred design the double-bend configuration with the third slight bend resulting in a slight incline of the tubes at the lower end of the "C" configuration. (Plaintiff's Exhibit 10). The Court finds that the tubular fireplace grate described in U. S. Design Patent No. 228,728 was reduced to practice in April, 1970.

16. The March, 1970, single-bend prototype and the April, 1970, prototypes were assembled with conduit clamps. Mr. Bergstrom concluded that conduit clamps were unsatisfactory for assembly and he decided to use a "U-bolt" construction method. On June 18, 1970, Mr. Bergstrom purchased enough U-bolts from the Goodin Company to assemble one unit. Mr. Bergstrom assembled one unit with the U-bolts sometime after June 26, 1970, during the summer of 1970.

17. With respect to the marketing of his invention, Mr. Bergstrom intended to go into the mail order business. He was reasonably knowledgeable in the mail order business, and he thought it was a good way to start his business. In connection with his interest in the mail order business, Mr. Bergstrom decided to prepare a fact sheet with which to reply to inquiries from prospective customers. He first prepared a pencil draft of a fact sheet. Then he took photographs of the U-bolt constructed prototype some time after June of 1970 and before September 12, 1970, to include in the fact sheet. Mr. Bergstrom prepared a final typed draft of the fact sheet. He then took it to Walter Nippolt, who made 500 copies for Mr. Bergstrom on or about September 12, 1970, at a cost not exceeding $17.50.

18. Mr. Bergstrom never used the fact sheet to reply to customer inquiries, nor did he ever use it as a device for soliciting orders from potential customers. This was primarily due to the fact that by the time Mr. Bergstrom began to offer his invention for sale, in February, 1971, the construction of the fireplace grate had been changed from a U-bolted structure to a welded structure and the fact sheet no longer accurately represented the construction of the product. Mr. Bergstrom also concluded that the fact sheet was not adequate for its intended purpose because the original was typed, the photographs looked amateurish, and the sheet was in black-and-white.

19. In January and February of 1971, which is after the critical date, Mr. Bergstrom had a two-color, three-fold, printed brochure professionally prepared by an advertising agency which he did use for the purpose of replying to mail order inquiries.

20. Parade Magazine is a magazine which appears in various newspapers around the United States, including the St. Paul Sunday newspaper. Parade of Progress is a column in that magazine which describes new ideas and new inventions of consumer products. The editor of the column is Lawrence Galton who writes the column under the pen name of Peter Dryden.

21. a. Inventors, manufacturers, and people with new ideas or products write to Mr. Dryden to attempt to interest him in their products. They hope that he will write a description of their products in the Parade of Progress column. No charge is made for this publicity.

b. A typical write-up in the Parade of Progress column includes a photograph of the product and a paragraph describing the product including the name and address of the manufacturer and price information.

c. Mr. Bergstrom learned about the Parade of Progress column through the St. Paul Sunday newspaper.

22. a. In late September or early October of 1970, Mr. Bergstrom prepared a draft of a letter to Peter Dryden with the intent of persuading Mr. Dryden to do a write-up of the fireplace grate in his Parade of Progress column.

b. Mr. Bergstrom gave the draft of this letter to his wife to type and send and he intended that the letter be sent to Mr. Dryden. While there has not been conclusive proof of receipt of this letter and of a subsequent letter of November, 1970, to Mr. Dryden, the Court finds that there is sufficient evidence from which to infer receipt. Therefore, the Findings and Conclusions are based on those inferences with respect to both of these letters to Mr. Dryden.

c. In the September or ...