Brookfield Athletic Shoe v. Chicago Roller Skate
| Decision Date | 27 November 1984 |
| Docket Number | No. 83 C 5301.,83 C 5301. |
| Citation | 607 F. Supp. 241 |
| Parties | BROOKFIELD ATHLETIC SHOE COMPANY, INC., Plaintiff, v. CHICAGO ROLLER SKATE COMPANY and Red Stone Enterprise Company, Ltd., Defendants. |
| Court | U.S. District Court — Northern District of Illinois |
COPYRIGHT MATERIAL OMITTED
J. William Hayton, Bell, Boyd & Lloyd, Chicago, Ill., John N. Williams, Frank P. Porcelli, Timothy A. French, Fish & Richardson, Boston, Mass., for plaintiff.
Richard Bushnell, Trexler, Bushnell & Wolters, Ltd., Chicago, Ill., for respondent.
This cause is before the Court on the motion of defendants Chicago Roller Skate Company ("Chicago") and Red Stone Enterprise Company, Ltd., for summary judgment on the ground that (1) Chicago's roller skate, Exhibit 17, does not infringe the design patent in suit, U.S. Patent Des. No. 261,542, owned by the plaintiff Brookfield Athletic Shoe Company, Inc.; (2) the patent in suit, No. 261,542, is invalid for the reasons enumerated in 35 U.S.C. §§ 102, 103 and 171; and (3) defendant is entitled to all of its costs, expenses, and attorneys' fees pursuant to the provisions of 35 U.S.C. § 285.
Defendants' motion has been fully briefed with memoranda supported by evidence produced through discovery, including depositions of expert witnesses and others. In accordance with 28 U.S.C. § 636(b)(1)(B), the Court referred the motion for summary judgment to the Executive Committee for designation of a magistrate to hear it and submit recommendations for disposition. Magistrate Joan H. Lefkow was designated; and on November 5, 1984, she filed a report which discloses a careful analysis of the issues and a resolution of them which the Court finds is amply supported by the record. Magistrate Lefkow has made recommendations for disposition of defendants' motion for summary judgment which the Court finds are supported by the authorities. Therefore, it adopts Magistrate Lefkow's report as its memorandum opinion; and on the authority of 28 U.S.C. § 636(b)(1)(C), the parties having had opportunity to file objections, the Court accepts in whole Magistrate Lefkow's recommendations, incorporates her report into this order making it a part hereof as Appendix A, and orders that:
1. The motion for summary judgment of the defendants Chicago Roller Skate Company and Red Stone Enterprise Co., Ltd., is granted on the question of infringement, and the Court finds that the roller skate in question, Exhibit 17, does not infringe the design patent in suit, U.S. Patent Des. No. 261,542.
2. Defendants' motion for summary judgment on the question of the validity of plaintiff's design patent is denied, and the Court finds that U.S. Patent Des. No. 261,542 is valid under 35 U.S.C. §§ 102, 103 and 171.
3. As recommended by Magistrate Lefkow, defendants' request for an award of attorney fees and costs is denied.
IT IS SO ORDERED.
APPENDIX A
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
BROOKFIELD ATHLETIC SHOE COMPANY, INC., Plaintiff,
v.
CHICAGO ROLLER SKATE COMPANY and RED STONE ENTERPRISE COMPANY, LTD., Defendants.
This is an action for infringement of a design patent. Pending is defendants' motion for summary judgment asserting invalidity and non-infringement.
Brookfield Athletic Shoe Company (Brookfield) is a Massachusetts manufacturer of athletic footwear. In the late 1970's, Brookfield began to manufacture and sell roller skates of its own design. In 1981, it patented a particular skate design, U.S. Des. No. 261,542 (). The patented design, entitled "Integral Shoe Sole and Wheel Mounting for Roller Skate" (Defendants' Exhibits 1, 14), has the appearance of a wheel mounting plate with multiple angled bosses to secure the skate wheels. The element that connects the skate boot to the wheel mounting is of a wedge shape, with the heel end slightly raised. The "wedgee" sole and wheel mounting plate are constructed in one piece. It is this patent that the defendants have allegedly infringed.
Defendant Chicago Roller Skate Company (Chicago) is a roller skate manufacturer. In 1979 Chicago began purchasing for distribution in the United States an inexpensive outdoor sidewalk skate from the defendant Red Stone Enterprises (Red Stone), a Taiwan manufacturer. This skate (Defendants' Exhibit 17) has a plate with multiple angled bosses for wheel mounting. The aspect that connects the plate to the skate boot is of an exaggerated wedge shape with an extra wedged piece inserted directly under the heel. These elements are combined in one integrated piece. Defendants first contend that the patent is invalid because the design lacks the necessary requirements of novelty and nonobviousness under 35 U.S.C. §§ 102 and 103. Second, even if the patent is valid, defendants contend the Chicago design does not infringe because it is so different from the Brookfield design that the ordinary observer would readily distinguish the two skates. Last, Red Stone individually contends it has not committed an act of infringement within the United States. Defendants also seek attorney's fees under 35 U.S.C. § 285 on the grounds that this is a spurious law suit.
A patent, once granted, is presumed valid. 35 U.S.C. § 282. That presumption is strengthened if all the pertinent prior art was before the Patent Office and considered by the examiner in issuing the patent. Laser Alignment, Inc. v. Woodruff & Sons, Inc., 491 F.2d 866, 871 (7th Cir.1974), cert. denied, 419 U.S. 874, 95 S.Ct. 135, 42 L.Ed.2d 113 (1974). The examiner need not cite all the prior art, for "it is presumed that the examiner considered the uncited art and discarded it as being no more pertinent than that cited by him." Panduit Corp. v. Burndy Corp., 517 F.2d 535, 538 n. 2 (7th Cir.1975), cert. denied, 423 U.S. 987, 96 S.Ct. 395, 46 L.Ed.2d 304 (1975). A challenger may overcome the presumption of validity only by clear and convincing evidence to the contrary. Medical Laboratory Automation Inc. v. Labcon, Inc., 670 F.2d 671, 674 (7th Cir.1981); Astra-Sjuco, A.B. v. International Trade Commission, 629 F.2d 682, 688, 67 C.C.P.A. 128 (1980).
The patent in suit claims to be an "ornamental design for an article" under 35 U.S.C. § 171 (1982). A design patent encompasses not the function of an invention, but rather its distinctive appearance. Contico International v. Rubbermaid Commercial Products, Inc., 665 F.2d 820, 823 (8th Cir.1981). For a design patent to be valid, it must meet the statutory requirements of novelty and nonobviousness under 35 U.S.C. §§ 101-103.1Contico, 665 F.2d at 823.
The burden of proof is on the defendant to show by clear and cogent evidence that the design is not novel. Illinois Tool Works, Inc. v. Continental Can Co., 273 F.Supp. 94, 106 (N.D.Ill.1967), aff'd, 397 F.2d 517 (7th Cir.1968). Novelty of the design is a requirement under sections 101 and 102.2 Statutory novelty requires that an invention be something "new". Graham v. John Deere Co., 383 U.S. 1, 12, 86 S.Ct. 684, 691, 15 L.Ed.2d 545 (1966). Put simply, there must be a difference between each prior art reference and the patented design for it to be deemed "new". Roberts v. Sears, Roebuck & Co., 723 F.2d 1324, 1332 (7th Cir.1983). The essence of the patented design must not have been disclosed in the prior art. Id. Novelty requires a determination that the patented invention has not, in fact, been made before. Malsbary Manufacturing Co. v. Ald, Inc., 310 F.Supp. 1112, 1115 (N.D.Ill.1970), aff'd, 447 F.2d 809 (7th Cir. 1971); Illinois Tool Works, 273 F.Supp. at 104. No invention can be considered novel if it is substantially identical to a prior invention. Briggs v. Wix Corp., 308 F.Supp. 162, 168 (N.D.Ill.1969).
The novelty of a design patent is to be determined by its impact upon the ordinary observer. Novelty is established if the "average observer takes the new design for a different, and not a modified already existing design." Contico, 665 F.2d at 823, quoting Thabet Manufacturing Co. v. Kool Vent Awning Corp., 226 F.2d 207, 212 (6th Cir.1955). See also Clark Equipment Co. v. Keller, 570 F.2d 778, 799 (8th Cir.1978); Schnadig Corp. v. Gaines Manufacturing Company, Inc., 494 F.2d 383, 389 (6th Cir.1974).
A new combination of elements already existing in the prior art into a single product can be novel. Bela Seating Co. v. Poloron Products, Inc., 438 F.2d 733, 736 (7th Cir.1971); see Medtronic, Inc. v. Cardiac Pacemakers, Inc., 555 F.Supp. 1214, 1217 (D.Minn.1983). However, a combination of old elements will be carefully scrutinized to determine its novelty. Skil Corp. v. Rockwell Manufacturing Co., 358 F.Supp. 1257, 1259 (N.D.Ill.1973), aff'd in part, rev. in part sub. nom, Skil Corp. v. Lucerne Products, Inc., 503 F.2d 745 (7th Cir.1974).
In considering the novelty of the patent in suit the court takes the position of the "average observer" and must determine if the design is a truly "new" design and not a modification of a design existing in the prior art. The patent in suit claims to be an "integral shoe sole and wheel mounting for a roller skate". Defendants' Exhibit 1 at 1; Exhibit 2 at 2. The illustrations (Defendants' Exhibit 1), the photographic representations (Defendants' Exhibit 14a-d), and the physical example of the patented design (Defendants' Exhibit 14), demonstrate that from the side view the roller skate has a gradually rising wedge-shaped sole. It is molded in one piece with the wheel mounting plate. The plate has multiple angled bosses with rounded contours to which the wheel elements attach. From the other views, bottom, front and rear, one sees that the wedged sole is quite wide, like that of a standard shoe sole, spanning the width of the skate shoe at all aspects.
The prior art cited by the Patent Office consists of four...
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