Contico Intern. v. Rubbermaid Commercial Products

Decision Date02 January 1981
Docket NumberNo. 79-702C(A).,79-702C(A).
Citation210 USPQ 649,506 F. Supp. 1072
PartiesCONTICO INTERNATIONAL, INC., Plaintiff, v. RUBBERMAID COMMERCIAL PRODUCTS, INC., Defendant.
CourtU.S. District Court — Eastern District of Missouri

Ralph W. Kalish, Kalish & Gilster, St. Louis, Mo., for plaintiff.

John K. Roedel, Jr., Senninger, Powers, Leavitt & Roedel, St. Louis, Mo., for defendant.

MEMORANDUM OPINION

HARPER, District Judge.

Plaintiff brought this action against defendant in a single count, seeking a declaratory judgment that United States Design Letters Patent Number 251,833 (hereinafter referred to as 833) is unenforceable or that said patent is not infringed by certain dollies manufactured and sold by plaintiff. Additionally, plaintiff prays that defendant be enjoined from threatening or filing civil actions for infringement of 833 against plaintiff, its customers, or third parties, and that plaintiff be awarded its costs and reasonable attorney's fees incurred in this action.

Defendant has counterclaimed, praying for a declaratory judgment that 833 is valid and that it is infringed by plaintiff's alleged imitation dolly. Defendant also seeks appropriate injunctive relief under 35 U.S.C. 283, and award of damages under 35 U.S.C. 284, and an award of attorney's fees and costs.

Jurisdiction is proper under 28 U.S.C. 1338(a) and 28 U.S.C. 2201. By order of this Court on August 21, 1979, the issue of the patent invalidity of 833 as alleged in plaintiff's complaint and the issue of the infringement of 833 by the plaintiff as alleged in defendant's counterclaim, were tried separately from and prior to issues of damages.

The pleadings, exhibits, stipulations and credible testimony disclose that plaintiff is a corporation duly organized and existing under Missouri law, and that plaintiff is doing business as Continental Manufacturing Company, with its principal office and place of business in St. Louis County, Missouri. Defendant is a corporation organized and existing under Delaware law, with its principal office and place of business at Winchester, Virginia. The parties compete in the sale of industrial, institutional and sanitation products.

On August 22, 1977, Dale T. Maza and Glen E. Tomblin, employees of the defendant, applied for a design patent entitled "Dolly for Refuse Container." The inventors claimed an ornamental design for a dolly as shown in three figures in Plaintiff's Exhibit 1 (consisting of three pages), copy of which exhibit is attached hereto and made a part of this opinion. Their invention was designed for use with defendant's "Brute" line of 20-gallon, 32-gallon and 44-gallon containers.

Defendant's first order for a commercial version of this invention came on February 10, 1978. Subsequently, plaintiff obtained a copy of defendant's commercial dolly and used it as a model to design its own dolly to compete with defendant. Plaintiff introduced its commercial dolly in August, 1978.

On May 15, 1979, Patent 833 issued to defendant as assignee from inventors Maza and Tomblin. On June 5, 1979, defendant notified plaintiff that it found plaintiff's commercial dolly to infringe 833. This lawsuit followed.

Plaintiff challenges the validity of 833 on the grounds that Maza and Tomblin failed to disclose prior art in applying for 833, that 833 is a functional rather than ornamental design, that 833 is concealed in normal use, and that 833 is obvious in view of prior art. Assuming that 833 is valid, plaintiff argues that its commercial dolly does not infringe 833.

Patents enjoy a strong presumption of validity under 35 U.S.C. 282. In E. I. DuPont de Nemours v. Berkley & Co., 620 F.2d 1247, 1266 n. 30 (8th Cir. 1980), the Court said:

"The mandate of section 282 is twofold, requiring `that a party asserting invalidity bear not only the presumption-generated burden of going forward with proof but also the burden of persuasion on that issue.' The latter burden remains upon the party asserting invalidity whether relevant prior art was or was not considered by the examiner during prosecution of the patent application before the PTO. The presumption is fully rebutted only when the party asserting invalidity meets the burden of persuasion, i. e., relies on evidence that does in truth render the claimed invention invalid, though rebuttal may be easier when the prior art relied on is more relevant than that considered by the examiner." (Citations omitted.)

In the Eighth Circuit one who challenges application of this presumption must defeat it by "substantial evidence." Clark Equipment v. Keller, 570 F.2d 778, 795 (8th Cir.), cert. denied 439 U.S. 825, 99 S.Ct. 96, 58 L.Ed.2d 118 (1978); Woodstream Corp. v. Herter's, Inc., 446 F.2d 1143, 1149 n. 4 (8th Cir. 1971).

This presumption is weakened, if not completely destroyed, by proof that the patent applicants inequitably withheld pertinent prior art from consideration by the Patent Office. Ralston Purina v. General Foods, 442 F.2d 389, 390 (8th Cir. 1971); Norton v. Curtiss, 433 F.2d 779 (C.C.P.A. 1970); American Infra-Red Radiant v. Lambert Industries, 360 F.2d 977, 989 (8th Cir. 1966).

The Eighth Circuit further said in E. I. DuPont de Nemours, supra, at 1274:

"This circuit has recognized that inequitable conduct short of fraud can be a defense in a patent infringement suit. To make out a case of inequitable conduct Berkley must prove, by `clear, unequivocal and convincing evidence,' that DuPont's conduct made it impossible for the PTO to fairly assess the patent application against the prevailing statutory criteria, and that it involved `some element of wrongfulness, willfulness or bad faith.' If the information be irrelevant, its innocent or negligent misrepresentation or non-disclosure, whether or not intentional, does not amount to inequitable conduct." (Citations omitted.)

The Court finds that plaintiff has not established by "substantial evidence" that the applicants for 833 withheld relevant evidence of prior art. At the trial plaintiff produced several examples of alleged prior pertinent art1 and an expert witness, Frank Roth, who testified that they were similar to 833 from a visual design perspective. However, defendant countered with its own expert, Bernard McDermott, who testified that only one of plaintiff's cited patents could aid design of 833, and that patent, Swedish Patent No. 154,659, was independently discovered and considered by the Patent Office examiner in determining the claim. The Court relies on McDermott inasmuch as Roth testified to the similarity of the cited patents to particular features of 833 (the raised central cylinder, the side skirt, the wheel wells, and the rib structure), while "it is the appearance of the article taken as a whole which must meet the statutory requirements * * *." Clark Equipment, 570 F.2d at 799.

Plaintiff contends that since the application for United States Patent No. 3,512,740 was prosecuted by the same counsel who prosecuted the application for 833, the Court should infer intentional withholding of at least this knowledge from the Patent Office. While the Court is disturbed that the applicants for 833 made no disclosure of prior art, this fact has no legal import until plaintiff establishes the relevancy of art withheld to 833. E. I. DuPont de Nemours, supra. Based on the record before it, this Court finds that no prior art relevant to 833 was withheld from the Patent Office, and, accordingly, the Court finds that the presumption of validity under 35 U.S.C. 282 is applicable.

Plaintiff contends that 833 is not "ornamental" under 35 U.S.C. 171. The ornamental quality of a design was discussed in Gorham Co. v. White, 81 U.S. 511, 14 Wall. 511, 20 L.Ed. 731 (1871), which noted that "the thing invented or produced, for which a patent is given, is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form." 81 U.S. at 525, 14 Wall. at 525. More recently, the Third Circuit found that "to be ornamental the configuration must be designed for aesthetic appeal rather than dictated primarily by functional requirements, and the design as a whole must produce a pleasing impression on the aesthetic sense of the ordinary observer." Rains v. Cascade Industries, 402 F.2d 241, 247 (3rd Cir. 1968).

Based on the evidence before it, this Court finds that 833 possesses aesthetic appeal and that it produces a pleasing impression on the aesthetic sense of the ordinary observer. 833 has no harsh metal edges, no unsightly plates or bars, and no rough-cut, fragmented image prominent in older dollies. 833 does have softly accentuated characteristics, five casters, and unitary, futuristic form which distinguishes it from the industrial products shown on the record.

Inasmuch as the record shows many devices of different shape and size which performed the same task as 833, the Court cannot unequivocally state that its design was dictated primarily by function. Plaintiff strenuously argues that various features of 833 are functionally dictated, but this Court notes that the proper focus of inquiry is upon appearance as a whole, not piecemeal, Clark Equipment, Rains, and that plaintiff's evidence on the subject went not unchallenged. Accordingly, the Court finds that 833 has "ornamental" qualities within the meaning of 35 U.S.C. 171.

Both parties devoted great effort to retracing the steps made by Maza and Tomblin in designing 833. While such evidence may be relevant, the Court does not place great reliance upon it.

In Gorham Co., 81 U.S. at 525-6, 14 Wall. at 525-6, the Court said:

"Manifestly the mode in which those appearances are produced has very little, if anything, to do with giving increased salableness to the article. It is the appearance itself which attracts attention and calls out favor or dislike. It is the appearance itself, therefore, no matter by what agency caused, that constitutes mainly, if not entirely, the contribution to the public
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