Cohn v. Coleco Industries, Inc.
| Decision Date | 03 June 1977 |
| Docket Number | No. 959,D,959 |
| Citation | 558 F.2d 53,194 USPQ 241 |
| Parties | David COHN, Plaintiff-Appellant, v. COLECO INDUSTRIES, INC., Defendant-Appellee. ocket 76-7563. |
| Court | U.S. Court of Appeals — Second Circuit |
Kenneth E. Macklin, White Plains, N. Y. (Paul H. Heller, Kenyon & Kenyon, Reilly, Carr & Chapin, New York City, of counsel), for plaintiff-appellant.
Peter L. Costas, Hartford, Conn. (Stanley L. Kantor, Forsythe, LeViness & Pearson, New York City, of counsel), for defendant-appellee.
Before SMITH, OAKES and MESKILL, Circuit Judges.
Plaintiff, David Cohn, brought this action against the defendant, Coleco Industries, seeking an injunction and an accounting as a result of defendant's alleged infringement of a patent for a toy bowling game. Defendant moved for summary judgment on the ground that the doctrine of file wrapper estoppel barred this action. The United States District Court for the Southern District of New York, Whitman Knapp, Judge, granted the motion and dismissed the complaint. We affirm.
During the 1950s plaintiff invented a toy bowling game. It was designed to simulate the play action of regulation bowling. The game is played in the same way regulation bowling is played, i. e., by rolling a ball at a group of tenpins assembled in a triangle, the object being to strike as many of the pins as possible. As with regulation bowling, struck pins must be removed from the playing surface and reassembled in a triangle after each frame. The device Cohn designed performed the removal and resetting functions through the combined use of magnets, elastic strings and springs. For convenience, an illustration of the device is provided below.
The game can be set up on any long, flat surface, such as a floor. The base of the game is made of sheet steel, so that magnets will be attracted to it. The tenpins are made of plastic, and magnets are glued to their bases. These magnets hold the pins on the base plate until they are struck with sufficient force to break the magnetic attraction. When the magnetic force is broken, the pin is lifted off the base plate by means of an elastic string upon which it is tethered. The strings are attached to a reset plate held above the base plate. It is in this way that the Cohn device performs the removal function mentioned above.
In order to reset the pins effectively, two things must be done. First, the pins must be lowered back to the base plate so that they are assembled in a relatively precise triangle. Second, the elastic strings must be stretched so that they can again lift the pins off the playing surface when the pins are struck. The first is accomplished by means of a guide plate with ten holes in a triangular pattern. When the reset plate, to which the strings are attached, is lowered toward the base plate, the elastic strings, which are now contracted, pass through the holes in the guide plate and lower the pins in a triangle. The second is accomplished by means of compression springs placed between the reset plate and the guide plate. The guide plate is immobile, and is set at a fixed distance above the base plate on a U-shaped frame. The reset plate can be moved in order to lower the pins back to the base plate. Normally, the reset plate rests on compression springs a fixed distance from the guide plate. When the pins are reset, however, the player pushes the reset plate downward against the compression springs until the pins are lowered to the base plate. When the player releases his pressure, the compression springs push the reset plate back to its original position and thereby stretch the elastic strings. In this way, the pins are reset, and the game is readied for another frame.
Plaintiff applied for a patent on this device in 1958. Among the claims he made was the following:
A toy bowling game comprising a flat metal base of magnetic material having an extensive upper surface; a supporting member (reset plate) secured to the said base and extending over the latter in a spaced relation thereto; a bowling pin having a permanent magnet provided with north and south poles disposed at its base to enable the pin to be attracted to and supported on the flat base plate in upright position; and an elastic string secured to the tip of the bowling pin and to the said supporting member (reset plate) extending over the base, said string having a length and strength such that when only slightly extended it will maintain the bowling pin raised above and out of contact with the said metal base, and when more fully extended it will permit the magnet on the bowling pin to contact the metal base, said pin being supported thereby in upright position and said magnet resisting removal of the pin from the base by the said elastic string.
Before plaintiff obtained a patent on his device, however, his claims were substantially narrowed. Bowling devices are hardly a development of the 1950s. Indeed, the file of plaintiff's patent cites references dating back to 1918. The game itself, of course, has ancient origins. The prior art contained both bowling games and pin-setting devices. Some of these incorporated magnets, elastic strings and springs, either singly or in combination. A patent granted to Lloyd in 1940 utilized pins tethered on elastic strings which were attracted to the base plate of his game by means of magnetism. A patent granted to Hedenskoog in 1944 utilized compression springs instead of elastic string. His device used a guide that functions somewhat like plaintiff's guide plate. However, Hedenskoog did not use magnets, and his failure to use elastic string deprived the pins of freedom of movement. A patent granted to Igou in 1933 for a pin-setting device shows a spring-biased setting device that operates by means of pushing downwards on a handlebar against a tension spring. When the operator releases his pressure on the bar, the tension spring contracts, thereby raising the setting device. The Igou device is illustrated below.
The patent examiner rejected plaintiff's claims as unpatentable in light of Lloyd, Hedenskoog and Igou. In response, plaintiff amended his claims to specify that the reset plate was "spring-urged," i. e., the compression springs between the guide plate and the reset plate hold the reset plate up. The amended claim recited the fact that the springs automatically returned the reset plate to its normal position a fixed distance above the guide plate. Despite these amendments, the examiner rejected the claims on October 26, 1960. In response to this rejection, plaintiff amended his claim to further emphasize the manner in which the compression springs normally "urged" the reset plate away from the base plate. Plaintiff's attorney distinguished the Igou device on the ground that it operated by means of pushing down against and stretching tension springs, while plaintiff's device operated by means of pushing down against and compressing compression springs. Specifically, he made the following...
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