Burgess Vibrocrafters v. Atkins Industries

• Decision Date: 15 May 1953
• Docket Number: No. 10643.,10643.
• Citation: 204 F.2d 311
• Parties: BURGESS VIBROCRAFTERS, Inc. v. ATKINS INDUSTRIES, Inc.
• Court: U.S. Court of Appeals — Seventh Circuit

204 F.2d 311 (1953)

BURGESS VIBROCRAFTERS, Inc. v. ATKINS INDUSTRIES, Inc.

No. 10643.

United States Court of Appeals Seventh Circuit.

May 15, 1953.

A. Trevor Jones, Kenneth F. Burgess and George I. Haight, Chicago, Ill., for appellant.

I. Irving Silverman and Myron C. Cass, Chicago, Ill., for appellees.

Before FINNEGAN, LINDLEY and SWAIM, Circuit Judges.

SWAIM, Circuit Judge.

Burgess Vibrocrafters, Inc., the manufacturer of a small, electrically operated jig saw, brought this action seeking a declaratory judgment of invalidity and non-infringement of Design Patent D-161,025, owned by the defendant Allen Atkins. The defendants, Allen Atkins and Atkins Industries, Inc., the exclusive patent licensee and likewise the manufacturer of a small electric jig saw, filed counterclaims alleging patent infringement, trademark infringement and unfair competition, and seeking a judgment holding that the plaintiff's Design Patent D-162,279 is void under Rev. Stat. § 4918, 35 U.S.C.A. § 66, as interfering with the defendants' prior design patent.

The District Court entered a decree in favor of the defendants on all issues. The plaintiff was enjoined from further patent and trademark infringement and unfair competition, an accounting was ordered to determine the defendants' damages, and it was ordered that the defendants recover from the plaintiff reasonable attorney fees. From this judgment the plaintiff appeals.

Both the Burgess and the Atkins saws are of small, lightweight construction, suitable principally as hobby devices for cutting ornamental patterns or designs from light wood. Both saws are equipped with a sanding disc and on each a file may be substituted for the saw blade. The devices thus embody the three-fold function of saw, sander and filer. The Burgess saw also features a fourth function, a blowing mechanism for dispersing sawdust and filings.

The Atkins saw was developed pursuant to an arrangement entered into early in 1949 between Atkins and the National Scientific Products Co. This arrangement provided that Hoffman, an employee of National, should work with Atkins; that Atkins should pay the development costs and that he should own the patent. After the design of the patent in suit was developed National went into the business of manufacturing the saw under an agreement with Atkins to pay him a royalty on sales. About 30,000 saws were sold during the 1949 season.

Among National's customers was the plaintiff, Burgess, a manufacturer and distributor of various electrical tools. The plaintiff sold about 10,000 of the Atkins saws, in part over the counter of its retail store in Chicago, but principally through mail orders solicited by newspaper and magazine advertisements.

Late in 1949 National decided to discontinue the manufacture of the Atkins saw, so informed Burgess and asked for and received from Burgess an offer for the purchase of the tools, dies and inventories for the manufacture of the Atkins saw. The Burgess offer was never accepted because Atkins decided to undertake the manufacture of the jig saw himself and he purchased the business from National. The plaintiff thereupon decided to develop its own jig saw. A Chicago designing firm was then employed and paid $2,500 for designing the Burgess saw. In July of 1950 Burgess placed on the market the saw which had been so designed for it. After the Atkins design patent was issued in November of 1950, but previous to the issuance of the patent on the Burgess saw, Atkins circularized the trade, charging that the Burgess saw was an infringement of his design patent and threatening the plaintiff's customers with suit for infringement. Burgess thereupon filed its action for a declaratory judgment.

We consider, first, the question of the validity of the Atkins Design Patent D-161,025. Congress has provided that one who has invented "any new, original, and ornamental design" for an article of manufacture may be granted a patent therefor. 35 U.S.C.A. § 73. As in the case of mechanical patents, the design must be the product of inventive faculty. "In the one, must appear creative novelty and utility; in the other, creative originality in artistry." Battery Patents Corp. v. Chicago Cycle Supply Co., 7 Cir., 111 F.2d 861, 862. It is not enough merely to say that the design is new and pleasing to the eye. Its conception must require that exceptional talent which is beyond the skill of the ordinary designer. Smith v. Whitman Saddle Co., 148 U.S. 674, 13 S.Ct. 768, 37 L.Ed. 606; Associated Plastics Companies v. Gits Molding Corp., 7 Cir., 182 F.2d 1000.

It must be kept in mind that the exercise of inventive genius, so essential to validity, relates only to the appearance of the article and its aesthetic appeal. It is artistic creativeness which the statute rewards. As the Supreme Court early recognized, in Gorham v. White, 14 Wall. 511, 81 U.S. 511, 525, 20 L.Ed. 731, "It is the appearance itself * * * that constitutes mainly, if not entirely, the contribution to the public which the law deems worthy of recompense."

These abstract criteria necessarily are elusive guides by which to test the patentability of a design. However, after a very careful study of all the evidence in this case, including the physical and documentary exhibits, we are convinced that the design covered by the Atkins patent does not exhibit that creative artistry requisite to the monopoly protection which the statute accords.

The Atkins saw embodies a base; a saw table supported above the base; a vertically movable blade; an overhanging arm for supporting the blade above the table; a mechanism on the base beneath the table for driving the blade and for changing the rotary motion of the motor shaft to the required up-and-down movement of the blade; and a sanding disc mounted on the motor shaft. All of these functional features are found in the prior art. All except the sanding disc are basic features of almost any jig saw, although, of course, there is no precise standard of shape, size or configuration.

The various parts of the Atkins saw are made of cast aluminum. The base, flat and rectangular in shape, is supported by rubber suction-cup feet, and has recessed holes near the corners for use in bolting the saw to a work bench. The motor block, with the motor laminations exposed, is mounted on the base. Attached to the motor shaft on one side is a scotch-yoke or transmission slide which imparts the required up-and-down movement to the blade. The sanding disc is mounted on the other end of the motor shaft, and adjacent to it is a sander table which is attached to the motor block. The saw table, equipped with a miter guide or protractor, rests off-center on the top of the motor block. The overhanging saw arm is of channel shaped construction and is attached to the motor block at the rear beneath the table. It is equipped on the end with a saw guide and a leaf-spring to which the upper end of the blade is attached.

Just as it is not enough merely to say that a design is pleasing in appearance, neither is it sufficient simply to show that no prior design is "like" the one in suit. That a design may be distinguished from those found in the prior art does not import the required novelty and ornamentation. A design must be tested by its over-all aesthetic effect, and its artistic appeal, if there be any, must represent a step which has required inventive genius beyond the prior art. A base, a rising mass supporting a saw table and an overhanging arm were basic features of numerous prior jig saw designs. Some of those to which we have been referred appear more pleasing to the eye than others, and no two of them look precisely alike. As would be expected, the Atkins design represents still another variation in detail, and without a doubt is easily distinguished in appearance. But its general appearance does not differ significantly from prior designs. Certainly its artistic appeal, if any,...