Fearing Mfg. Co. v. Hopkins Agr. Chem. Co.
| Decision Date | 05 March 1980 |
| Docket Number | No. 75-C-238.,75-C-238. |
| Citation | 485 F. Supp. 985 |
| Parties | FEARING MANUFACTURING CO., Plaintiff, v. HOPKINS AGRICULTURAL CHEMICAL CO., Defendant, and Y-Tex Corporation, Intervenor. |
| Court | U.S. District Court — Western District of Wisconsin |
Michael, Best & Friedrich, Madison, Wis., for plaintiff; Jacobson & Johnson, St. Paul, Minn., of counsel.
Theodore J. Long, Madison, Wis., for defendant; Clyde F. William and David A. Anderson, Chicago, Ill., of counsel.
This suit concerns the alleged infringement of a design patent and a utility patent which were issued for the same device, an animal identification ear tag. Plaintiff, the owner by assignment of the two patents, charges Hopkins Agricultural Chemical Company, the seller of the suspect ear tags, with infringement of the design patent, United States Patent No. 229,571. Y-Tex Corporation, the manufacturer of the suspect tags, intervenes in this action and defends against charges that it has infringed both the design patent and a subsequently issued utility patent, United States Patent No. 3,934,368. Both defendants counterclaim, alleging patent invalidity and demanding declaratory, injunctive and other relief. Jurisdiction is predicated upon 28 U.S.C. § 1338(a).
This suit is now before the court on two motions: (1) plaintiff's motion to substitute United States Reissue Patent No. 29,536 for the original utility patent; and (2) defendant Y-Tex's motion for partial summary judgment on the claim involving the utility reissue patent, on the ground that the patent is invalid for double patenting over the design patent.
Plaintiff's motion to substitute Reissue Patent No. 29,536 for the original Patent No. 3,934,368 is unopposed by Y-Tex, against whom the patent is asserted. Y-Tex will not be prejudiced by the substitution; 35 U.S.C. § 252 provides that a person may continue to engage in activities commenced prior to the grant of the reissue unless those activities constitute a violation of a valid claim in the reissue patent which also appeared in the original. For these reasons, plaintiff's motion to substitute the reissue patent for the original is granted.
With respect to the utility patent claim against Y-Tex, there is no genuine issue as to any of the material facts set out hereafter under the heading, "Facts."
Donald David Fearing, inventor of the tag which is the subject matter of the patents, first sought a United States patent for the tag on September 23, 1971, when he filed an application for a design patent. That application was granted on December 11, 1973, and the design patent was issued for a term of 14 years.
On May 22, 1974, Fearing filed an application for a utility patent that was a continuation-in-part of an earlier, abandoned application. The utility patent was issued on January 27, 1976, for a term of 17 years. The earlier issued design patent is not cited as a reference in the utility patent, and there is no evidence that the design patent was ever formally considered in connection with the applications for the utility patent or the reissue of the utility patent. Neither was it completely overlooked, however. The patent examiner knew of the existence of the design patent, as is evident from a September 23, 1975, telephone conversation between the examiner and plaintiff's lawyer, during which the examiner referred to the design patent.
On February 14, 1978, the utility patent was reissued to conform to an application containing amended claims.
Plaintiff is the owner by assignment of both the design and utility patents. Plaintiff commenced this action on June 4, 1975, prior to the issuance of the utility patent, charging infringement of the design patent. In March of 1976, plaintiff commenced a lawsuit against Y-Tex in the District of Wyoming charging infringement of both the design and utility patents. As a result, Y-Tex was granted leave to intervene in this action as a defendant on May 26, 1976.
The device which is the subject matter of the patents is an animal identification ear tag which has been produced by plaintiff under the name of Fearing Tuff-Flex. The following drawing of the tag is reproduced from the Fearing design patent, and is substantially similar to drawings included in the reissue of the utility patent:
Simply stated, the Fearing tag consists of three segments: (1) a flat, broad body portion constructed of a resilient, rubberlike material; (2) a short narrow neck which extends at a right angle backward from the top of the body portion; and (3) a long, narrow anchoring head which extends upwardly and downwardly from the neck and which is connected at its midpoint to the neck. The neck of the device is resiliently hinged to the body portion and to the anchoring head in such a manner that it is bendable at the lines of intersection. As a consequence, the anchoring head can be collapsed against the neck and body so that all three portions of the tag are in a parallel relation to one another.
OPINIONAny invention protected by plaintiff's design patent must inhere in the appearance of the neck and anchoring head portion of the tag, since there is no originality in the appearance of the remainder of the tag.1 For the same reason, any invention protected by the utility patent must likewise inhere in the neck and anchoring head. Indeed, the utility patent application focuses almost exclusively on this portion of the tag.2 The invention claimed by the utility patent application is an ear tag so constructed that the long, narrow anchoring head may be folded flush against the neck of the tag and inserted through a slit in the animal's ear; the anchoring head need not be flexed or rolled prior to insertion as the heads of other tags must be. After insertion, the anchoring head extends upwardly and downwardly from the slit, rather than laterally as do the anchoring heads of other tags.
Research Corporation v. Nasco Industries, Inc., 501 F.2d 358, 362 (7th Cir. 1974), cert. denied 419 U.S. 1096, 95 S.Ct. 689, 42 L.Ed.2d 688 (1974). Both conditions are met here: there is no issue of material fact; the nature and operation of the anchoring head are simple enough that explanations by technical experts are unnecessary.
Having found that there is no genuine issue as to any fact material to the utility patent claim, and that a motion for summary judgment is proper in a case such as this, I now consider whether Y-Tex is entitled to judgment as a matter of law.
It is provided in 35 U.S.C. § 282 that patents are presumptively valid. This presumption imposes on the party attacking the patent the burden of making a clear and convincing showing of invalidity. Chicago Rawhide Mfg. Co. v. Crane Packing Co., 523 F.2d 452 (7th Cir. 1975), cert. denied 423 U.S. 1091, 96 S.Ct. 887, 47 L.Ed.2d 103 (1976). The Seventh Circuit has ruled that where a charge of double patenting has been made and the first patent is not cited as a reference in the second patent, "any presumption of validity of the second patent is greatly undermined." Ropat Corp. v. McGraw-Edison Co., 535 F.2d 378 (7th Cir. 1976). Here, the design patent was not cited as a reference in the later issued utility patent. Nevertheless, the patent examiner knew of the design patent when he granted the utility patent. Since, on a motion for summary judgment, all inferences must be drawn in favor of the party resisting the motion, Adickes v. S. H. Kress & Co., 398 U.S. 144, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970), I will assume that when the examiner granted the utility patent, the consideration which he gave to the design patent was great enough that the burden of persuasion remains with Y-Tex. Although I recognize that the burden is a heavy one, TSC Industries, Inc. v. International Harvester Company, 406 F.2d 53 (7th Cir. 1968), I nevertheless find that Y-Tex has successfully sustained it.
The patent laws allow a design patent and a utility patent to issue on the same device, but each patent must claim a separate, distinct patentable invention. Ropat Corp. v. McGraw-Edison Co., 535 F.2d 378 (1976). When two patents are issued for the same invention, the power to create...
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