Contico Intern., Inc. v. Rubbermaid Commercial Products, Inc.

• Decision Date: 04 December 1981
• Docket Number: No. 81-1134,81-1134
• Citation: 665 F.2d 820
• Parties: CONTICO INTERNATIONAL, INC., Appellant, v. RUBBERMAID COMMERCIAL PRODUCTS, INC., Appellee.
• Court: U.S. Court of Appeals — Eighth Circuit

Page 820

665 F.2d 820

212 U.S.P.Q. 741

CONTICO INTERNATIONAL, INC., Appellant, v. RUBBERMAID COMMERCIAL PRODUCTS, INC., Appellee.

No. 81-1134.

United States Court of Appeals,

Eighth Circuit.

Submitted Sept. 17, 1981.

Decided Dec. 4, 1981.

Ralph W. Kalish (argued), Kalish & Gilster, St. Louis, Mo., for appellant.

Everett R. Hamilton, Edward G. Greive, Hamilton, Renner & Kenner, Akron, Ohio, and John K. Roedel, Jr. (argued), Senniger, Powers, Leavitt & Roedel, St. Louis, Mo., for appellee.

Before BRIGHT, HENLEY and ARNOLD, Circuit Judges.

ARNOLD, Circuit Judge.

This is a design patent case. The questioned patent, owned by defendant Rubbermaid Commercial Products, Inc., describes an ornamental design for a dolly that is attachable to certain of its refuse containers. The plaintiff Contico International, Inc., brought this action in the District Court ¹ seeking a declaratory judgment that Rubbermaid's design patent, No. 251,833 (No. 833), is invalid and that the patent is not infringed by dollies manufactured and sold by plaintiff. Contico also asked that defendant be enjoined from filing or threatening to file actions for infringement of No. 833 against the plaintiff, its customers, or other parties. The defendant counterclaimed, praying for its own declaratory judgment that No. 833 was valid and that the patent was infringed by the plaintiff's product, and further asking for injunctive and compensatory relief. ²

The cause was tried to the District Court, and a resulting judgment was filed on January 2, 1981, in favor of the defendant, holding the patent valid and infringed. By order of the District Court the issue of damages was to be tried separately and at a later date. ³ Contico now appeals the decision of the trial court. We affirm.

I.

Contico and Rubbermaid are competitors in the market for the sale of industrial, institutional, and sanitation products. In the early 1970's Rubbermaid was marketing a collection of refuse, material, and food-handling containers, along with various accessories, known as the "Brute" line. One such accessory was a zinc-plated metal dolly which enabled the containers to be rolled about, rather than being dragged or carried. In late 1976 a project to redesign the "Brute" line was undertaken. One aspect of the project involved the redesign of the "Brute" dolly.

The redesign project was primarily the work of two employees of defendant, Dale T. Maza, an industrial designer, and Glen E. Tomblin, a mechanical engineer. Their efforts resulted in an application, in their names, for a design patent entitled "Dolly for Refuse Container" filed August 22, 1977. See Plaintiff's Exhibit 1. This new dolly, unlike Rubbermaid's previous product, was made of a foam plastic material and had five casters as opposed to four.

Rubbermaid received its first orders for the new product in February of 1978. Sometime after its introduction the plaintiff Contico purchased one of defendant's dollies and used it as a model to design a competing version. Contico's version of the dolly was ready and offered for sale in August of 1978. There was evidence that both products have enjoyed impressive sales since the time of their introduction. ⁴

On May 15, 1979, design patent No. 833 was issued to Rubbermaid as the assignee from Maza and Tomblin. Thereafter, on June 5, 1979, Rubbermaid notified Contico by letter that it considered Contico's dolly to be an infringement of No. 833 and demanded that Contico cease and desist all manufacture and sale of the allegedly infringing dollies. Six days later, on June 11, 1979, plaintiff filed its complaint in the District Court.

The plaintiff claimed that No. 833 was invalid because: (1) Maza and Tomblin failed to disclose prior art in applying for No. 833, (2) No. 833 is a functional rather than an ornamental design, (3) the subject of No. 833 is concealed in normal use, and (4) No. 833 is obvious in view of the prior art. In its counterclaim the defendant, as owner of the patent, sought a declaratory judgment that No. 833 was valid, and asserted its right to sue and recover damages for past infringement and its right to enjoin future infringement.

In December of 1979 and April of 1980 the District Court conducted a five-day non-jury trial. After considering the evidence offered at trial and other relevant materials in the record the trial court found for the defendant. In reaching its decision the court found, inter alia, that Rubbermaid's design patent was new, original, ornamental, and nonobvious in view of the prior art, and that Contico had copied Rubbermaid's patented design. This appeal followed.

II.

The various issues involved in design patent cases have not been addressed by this Court on a regular basis. In fact, this is only the second design patent case we have heard since 1926, when Boyle v. Rousso, 16 F.2d 666 (8th Cir. 1926), was decided. See Clark Equipment Co. v. Keller, 570 F.2d 778 (8th Cir.), cert. denied, 439 U.S. 825, 99 S.Ct. 96, 58 L.Ed.2d 118 (1978). A partial reason may be "that the primary responsibility for sifting out unpatentable material lies with the Patent Office," Graham v. John Deere Co., 383 U.S. 1, 18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966), and not the courts. As Mr. Justice Frankfurter once observed, the courts are ill-fitted "to discharge the duties cast upon them by patent legislation." Marconi Wireless Telegraph Co. v. United States, 320 U.S. 1, 60-61, 63 S.Ct. 1393, 1420-1421, 87 L.Ed. 1731 (1943) (Frankfurter, J., dissenting) (footnote omitted).

With this in mind several points as to the role of the courts in patent suits, both at trial and on appeal, bear mention. The role of the trial court is a somewhat limited one, because patents, once granted by the Patent Office, enjoy a statutory presumption of validity. 35 U.S.C. § 282. ⁵ This statutory presumption rests on a legislative recognition of the considerable expertise possessed by the Patent Office and an assumption that the Office properly performs its administrative functions. See Morgan v. Daniels, 153 U.S. 120, 124-25, 14 S.Ct. 772, 773, 38 L.Ed. 657 (1894). Thus, there is wide agreement that the burden on the party asserting invalidity is a heavy one. In this circuit a trial court cannot void a patent unless invalidity is proved by substantial evidence. ⁶ Woodstream Corp. v. Herter's, Inc., 446 F.2d 1143, 1149 n.4 (8th Cir. 1971).

The role of this court on appeal is also circumscribed. For instance, as to all factual determinations made by the court below, our review must be kept within the confines of Rule 52(a), Fed.R.Civ.P., which allows us to reverse such findings only where they are clearly erroneous. Our role is also a limited one when viewed in light of a patent's statutory presumption of validity. This is especially true where, as here, the trial court has undertaken an independent examination of the relevant facts after testimony at trial and made extensive findings to the effect that the patent was validly issued. See Saf-Gard Products, Inc. v. Service Parts, Inc., 532 F.2d 1266, 1271 (9th Cir.), cert. denied, 429 U.S. 896, 97 S.Ct. 258, 50 L.Ed.2d 179 (1976). It is with these considerations in mind that we review the decision of the District Court.

III.

Design patents are obtainable pursuant to 35 U.S.C. § 171, which provides in part:

Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

As the language we have underscored suggests, a design patent is subject to some of the same requirements as a utility patent, but it is not the function of the invention that is protected by the patent, but rather "that which gives a peculiar or distinctive appearance to the manufacture, or article." Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 525, 20 L.Ed. 731 (1872).

The appearance of the claimed design must meet two conditions: novelty and nonobviousness, as defined by 35 U.S.C. §§ 101 and 102, and § 103, respectively. ⁷ The novelty of a design patent is to be considered in light of the impact of the design upon the ordinary observer. This condition is met when the "average observer takes the new design for a different, and not a modified already existing design." Thabet Manufacturing Co. v. Kool Vent Awning Corp., 226 F.2d 207, 212 (6th Cir. 1955). The nonobviousness of the design is viewed in a somewhat different light, however. There, "the differences between the design patent and the prior art must not be obvious to a designer with ordinary skill in the art." Clark Equipment Co. v. Keller, supra, 570 F.2d at 799.

The most substantial argument urged by Contico on appeal, and the only one we deem deserving of extensive discussion, is that the trial court erred when it found that No. 833 was not obvious in view of the prior art under 35 U.S.C. § 103. A conclusion of obviousness vel non pursuant to § 103 raises a question of law. But there are several factual findings which underlie any determination of the legal issue. They are the following:

(1) the scope and content of the prior art,

(2) differences between the prior art and the claimed design, and

(3) the level of ordinary skill in the pertinent art. Graham v. John Deere Co., supra, 383 U.S. at 17.

As for the first area of factual inquiry required by Graham, the trial court carefully scrutinized the relevant prior art. The court considered two models of Rubbermaid's earlier dollies, and eight other patents, both foreign and domestic, which described devices designed for the transport of such things as carpet, buckets, and barrels. ⁸

The second area of inquiry involves the differences between the prior art and the patent in issue. Here the trial court found significant differences between No. 833 and the prior art. In the trial court's eyes No. 833 was possessed of "softly accentuated characteristics" along with a "futuristic form." Contico International, supra, 506...