Famolare, Inc. v. Edison Bros. Stores, Inc.

Decision Date04 June 1981
Docket NumberS-77-387 LKK.,Civ. No. S-78-86 LKK
Citation525 F. Supp. 940
PartiesFAMOLARE, INC., Plaintiff, v. EDISON BROTHERS STORES, INC., Defendant. FAMOLARE, INC., Plaintiff, v. SCOA INDUSTRIES, INC., Defendant.
CourtU.S. District Court — Eastern District of California

COPYRIGHT MATERIAL OMITTED

Wilke, Fleury, Hoffelt & Gray, Sacramento, Cal., Hosier, Niro & Daleiden TLD, Chicago, Ill., for defendant Edison Bros. Stores, Inc.

Charles Townsend, San Francisco, Cal., Theodore Marois, Sacramento, Cal., Robert Bennett, Dewey, Ballantine, Bushby, Palmer, Wood, New York City, for plaintiff Famolare, Inc.

A. Yates Dowell, Arlington, Va., for defendant SCOA, Industries, Inc.

ORDER

KARLTON, District Judge.

Plaintiff in the above-entitled related actions is the owner of United States Patent No. 235,819 ('819), which is the patent on the shoe sole design used on the plaintiff's shoes marketed as the "Hi There" style. In these related suits the plaintiff has alleged that defendants have infringed upon its patented design for shoe soles. The matters are now before the Court on the following motions of the parties:

1. Defendants' motions for summary judgment on the grounds that the plaintiff's patent is obvious and therefore invalid pursuant to 35 U.S.C. § 103.

2. Defendants' motion for summary judgment on the grounds that the plaintiff's design patent primarily serves a utilitarian purpose and is therefore invalid.

3. Plaintiff's motion for a preliminary injunction prohibiting the defendants from selling, offering, or distributing the alleged infringing shoes during the pendency of this litigation.

4. Plaintiff's motion for a more definite statement of defendant EDISON BROTHER's counterclaim.

5. Plaintiff's motion to sever and stay defendant EDISON BROTHER's counterclaim from these actions.

Because the resolution of the defendants' motion for summary judgment on the grounds that the plaintiff's patent is obvious may well dispose of a number of issues raised by the motions listed above, I will address that motion initially.

I DEFENDANTS' MOTION FOR SUMMARY JUDGMENT PURSUANT TO 35 U.S.C. § 103
A. Obviousness

In essence Congress has required that an invention to be patentable must be inventive.1 By their motion for summary judgment defendants argue that plaintiff's design patent was not inventive but obvious and thus not patentable. I begin by seeking the applicable legal standard employed in determining whether a given product is obvious.

The beginning point in ascertaining the applicable legal standards is the terms of the applicable statutes. Design patents are granted pursuant to 35 U.S.C. § 171, which provides as follows:

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.
The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

By incorporating the other provisions of Title 35, Section 171 also requires that a design patent be novel, 35 U.S.C. § 1022 and non-obvious, 35 U.S.C. § 103. Section 103 provides as follows:

Conditions for patentability; non-obvious subject matter
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Several general principles developed in the case law are applicable to the matters currently under consideration. The courts have consistently held that the ultimate question of patent validity is one of law, Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545 (1966); M-C Industries, Inc. v. Precision Dynamics, Corp., 634 F.2d 1211, 1213 (9th Cir. 1980); Austin v. Marco Dental Products, 560 F.2d 966, 970 (9th Cir. 1977), cert. denied 435 U.S. 918, 98 S.Ct. 1477, 55 L.Ed.2d 511 (1978).3 Moreover and more puzzling is the doctrine that whether or not an invention is "obvious" is a question of law for the court, not a question of fact. M-C Industries, Inc., supra at 1213; See Walker v. General Motors Corp., 362 F.2d 56 (9th Cir. 1966).4 Nonetheless, the legal conclusion as to the issue of patentability must be resolved against the background of three factual inquires:

1. The scope and content of the prior art;

2. The differences between the prior art and the patent at issue; and

3. The level of skill in the pertinent art.

Graham v. John Deere Co., supra, 383 U.S. at 18, 86 S.Ct. at 694; Mayview Corp. v. Rodstein, 620 F.2d 1347, 1354 (9th Cir. 1980); Penn International Industries v. Pennington Corp., 583 F.2d 1078, 1080-81 (9th Cir. 1978).5

In the case of a design patent the factual inquiry noted above takes on a somewhat different cast than in the case of a utility patent because the term "level of skill in the pertinent art" is defined differently in each context. When determining the level of skill in the pertinent art in a design patent context the appropriate viewpoint is that of an ordinary person with ordinary acuteness examining the article upon which the design has been placed with the degree of observation that a person of ordinary intelligence would give. Mayview Corp. v. Rodstein, supra at 1355; Schwinn Bicycle Co. v. Goodyear Tire & Rubber Co., 444 F.2d 295, 299 (9th Cir. 1970). The application of this standard requires a finding that a design patent is invalid when "considering the scope and the content of the prior art and the differences between the prior art and the design covered by the patent, from the point of view of the ordinary intelligent man there is `substantial similarity in the overall appearance' between the patented design and the prior art relied upon. Schwinn Bicycle Co. v. Goodyear Tire & Rubber Co., 444 F.2d at 299." Mayview Corp. v. Rodstein, supra at 1355.6 It is against these standards characterized by binding authority as "legal standards" that the obviousness of the plaintiff's design patent must be determined.

The defendants rely upon four items of printed prior art which were published and in existence more than a year prior to the filing of Famolare's '819 design patent on August 22, 1974, as required by 35 U.S.C. § 102(b). See Exhibits A-D.7 Plaintiff has conceded that these exhibits constitute printed publications, published as of the dates that appear on the publications. See Famolare's Response to Documents of February 18, 1981. It is undisputed that there were three items of prior art before the patent examiner at the time the '819 patent was issued. See Exhibits Filed in Support of Defendants' Motions for Summary Judgment, Exhibits H-L. Moreover, defendants argue that it cannot be disputed that the prior art not before the Patent Office is more pertinent to and more closely resembles the Famolare patented design than the prior art that the patent examiner considered. Finally, defendants conclude that if the prior art not considered by the Patent Office is compared to the Famolare patented design from the point of view of an ordinary intelligent person there can be no doubt that there is a substantial similarity in overall appearance and thus the plaintiff's design patent must be declared invalid as a matter of law.

Plaintiff opposes the defendants' motion for summary judgment primarily on the basis that the question of obviousness is a poor candidate for summary judgment, citing Schroeder v. Owens-Corning Fiberglass Corporation, 514 F.2d 901 (9th Cir. 1975). The plaintiff also argues that its design patent is to be presumed valid under 35 U.S.C. § 282 and that defendants have not presented sufficient evidence to overcome that presumption. In this regard the plaintiff asserts that the defendants' prior art, while admittedly published before the filing of the '819 patent application, does not provide a sufficient basis for a finding of obviousness.8 Finally, the plaintiff contends that consideration of secondary factors such as the unsuccessful efforts by others, widespread copying of design, and the commercial success of the design in question indicates that the '819 patent was not obvious at the time of application. In support of this argument plaintiff submits the affidavits of a shoe designer, a retailer, and the plaintiff who attest to the commercial success of the '819 patented design and that said design was not obvious to an ordinary shoe designer at the time the patent application was filed. See Affidavit of Roger L. Cook filed July 29, 1980, Exhibits H, I and J.

B. Appropriateness of Summary Judgment

The question of when a patent infringement case is suitable for summary judgment disposition has been the subject of considerable debate and confusion. The Ninth Circuit has recently stated:

Patent claims are ones in which issues of fact often dominate the scene and summary judgment is allowed only with `great caution'. citations omitted. Summary judgment is clearly the exception and not the rule in patent infringement cases. Hycon Mfg. Co. v. H. Koch & Sons, 219 F.2d 353 (9th Cir. 1955).

Garter-Bare Co. v. Munsingwear, Inc., 622 F.2d 416 (9th Cir. 1980). See also Schroeder v. Owens-Corning Fiberglass Corp., supra at 902; Groen v. General Foods Corp., 402 F.2d 708, 709-10 (9th Cir. 1968). Nonetheless, under certain circumstances and even where caution is exercised, summary judgment disposition is proper in patent infringement cases. See Schwinn Bicycle Company v. Goodyear Tire & Rubber Co., supra; Ashcroft v. Paper Mate Manufacturing Company, 434 F.2d 910 (9th Cir. 1970); Flexible Plastics Corporation v. Black Mountain Spring Water Incorporated, 357 F.Supp. 554 (N.D.Cal.1972).

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