GB Lewis Company v. Gould Products, Inc.

• Decision Date: 12 August 1968
• Docket Number: No. 67 C 63.,67 C 63.
• Citation: 297 F. Supp. 690
• Parties: G. B. LEWIS COMPANY, Metallwerke Saar, Gunter Schanz Plastipol Kommanditgesellschaft, and Gunter Schanz, Plaintiffs, v. GOULD PRODUCTS, INC., Defendant.
• Court: U.S. District Court — Eastern District of New York

297 F. Supp. 690

G. B. LEWIS COMPANY, Metallwerke Saar, Gunter Schanz Plastipol Kommanditgesellschaft, and Gunter Schanz, Plaintiffs, v. GOULD PRODUCTS, INC., Defendant.

No. 67 C 63.

United States District Court E. D. New York.

August 12, 1968.

James G. Staples, Chicago, Ill. and Charles F. Young, New York City (Royall, Koegel, Rogers & Wells, New York City, and Parker & Carter, Chicago, Ill., of counsel), for plaintiffs.

Edward B. Hunter, New York City (Nolte & Nolte, New York City, of counsel), for defendant.

MEMORANDUM AND ORDER

DOOLING, District Judge.

Plaintiffs sue upon the defendant's alleged infringement of United States Design Patent No. Des. 191,144, issued to Gunther Schanz on August 15, 1961, upon his application filed June 17, 1959. The defendant moves for summary judgment on the issues of validity and infringement and defendant's motion must be granted.

The design originated with Schanz's filing on April 26, 1958, in Germany of Gebrauchsmuster (Utility Model, or petty, patent) No. 1,776,367, issued October 26, 1958, on a storage box of plastic adapted for stacking, with front visibility and removal opening for the box contents. This first Utility patent disclosed every design feature of plaintiff's later United States patent except for one, later mentioned. The first Utility patent described and illustrated a rectangular open topped plastic box the front wall of which rose only to half the height of the box; the low front wall rose vertically a short distance, then was inclined outwardly (forwardly) for about three times the length of its vertical rise, and ended in a second, very short vertical rise; the top, vertical segment of the front wall was extended vertically downward to form a skirt across the entire front of the box which joined the extended sidewalls of the box at either side. A wedge-shaped inverted pocket was thus formed at the front of the box; the pocket could serve as a finger hold or drawerpull for the box. On the front of the box, on the vertical segment, an oblong frame, open at the top, was molded to accommodate a slide-in label. The top edges of the other three walls of the box were crimped outwardly to form a low outwardly offset wall segment such in dimensions that one box could be securely set on top of another in snug fit and without sideward or rearward movement. Vertical ribs were formed against the outside of the side and rear walls, running from the outwardly crimped tops at least to the bottom of the box and, preferably, below it to form feet. The claims of the Utility patent as filed in (apparently) May 1958 are upon structure, not upon configuration in the sense of aesthetically satisfying design. However, the claims embrace as characterizing features (in a plastic storage box adapted for stacking and having a front visibility and removal opening and a front handle) the vertical exterior ribs, the downward opening pocket across the front formed through sidewall extensions joining the inclined front wall and vertical front surface, the label frame, and the vertical rise at the foot of the front wall (to equal the vertical extent of the crimp at the upper edge of the side and rear walls). Each feature is functional; no feature is described as ornamental; the external vertical ribs are wall reinforcement and intended to give one box, when stacked atop another, a secure foothold on the crimped ledge of the lower box; the structure of the front is for visibility, access and handhold; and the label frame is purely utilitarian. While design divorced from utility is not claimed for the structure, the specific structure is precisely claimed, and such "design" as the box has is claimed at least insofar as it is implicit in the structure claimed.

Between the filing and issuance of the first Utility patent Schanz registered, effective May 27, 1958, the design of the box of the first Utility patent as an industrial design under the Law of January 11, 1876, as amended. Such a registration, spoken of as a Geschmacksmuster, may be granted for an initial term of one to three years from date of filing, and the "author" has the right to request (as, in 1961, Schanz did request) that the term of protection be prolonged to a maximum of fifteen years. See Section 8. Compare 35 U.S.C. § 173 (authorizing design patents of 3½, 7 or 14 year terms at the patentee's election). The Law of January 11, 1876, protects the "authors" of "industrial designs" which are embodied in "new and original products" against "imitation" (Nachbildung) of their designs, and the remedial and punitive provisions of the copyright law are incorporated into the Law of January 11, 1876, with certain exceptions. Compare 17 U.S.C. § 5(g), (i), 37 C.F.R. §§ 202.10, 202.12; 35 U.S.C. § 171, 37 C.F.R. § 1.153(a).

On December 23, 1958, Schanz filed for and on April 2, 1959, there was issued Utility patent No. 1,786,384. The innovation claimed for this second storage box over the first Utility patent (No. 1,776,367) was greater stability, reinforcement and strength at the front parts of the sidewalls and at the junction points of the sidewalls with the front wall through positioning "between the vertical gripping ledge and the front wall of the box, halfway inclined forward, a horizontal wall surface, or * * * ledge or the like, connecting its upper ledges with one another, which is to be as broad as possible and preferably double as broad as the edge strip of the sidewalls, outwardly recessed through crimping, on both sides of the removal opening." The second Utility patent differed from the first only in broadening the top edge of the front half-wall into a horizontal "lying wall" surface and eliminating the very short vertical rise at the upper end of the front half-wall of the first Utility patent. As the application for No. 1,786,384 states, the slope of the front wall is steepened toward the vertical, and, as the application also notes, the horizontal or lying wall surface may be curved or may be rounded into the front wall or the gripping ledge. Utility patent No. 1,786,384 claims (in a plastic storage box adapted for stacking which has a front visibility and removal opening and a gripping ledge extending downward from the lower edge of the removal opening and from sidewall to sidewall) the horizontal lying wall between the gripping ledge and the front halfwall, the lying wall to be, preferably, twice the width of outward crimp displacement of the top edge of the sidewalls. (Utility patent No. 1,786,384 does not exhibit the label frame.)

It does not appear that a Geschmacksmuster was sought or obtained for the design differences that the second Utility patent presented.

Schanz filed for his United States design patent on June 17, 1959, supplying a single perspective figure exhibiting the right side and front of the box and a part of the interior; the figure did not disclose the structure in back of the vertical handhold member across the front; the specification is not descriptive, but it refers to the figure for all details of design; a captious eye could insist that the figure does not disclose—nor the application claim—an inclined front wall. In the oath Schanz said that the "design has not been patented in any country * * on an application filed by me * * * more than six months before this application; and that no application for patent on this design has been filed by me * * * in any country * * * except * * * No. 1,786,384, filed December 23, 1958, the priority of which is hereby claimed, 35 U.S.C. 119." The Utility patent, No. 1,786,384, was filed as "the priority document" on July 15, 1959.

In the first Office action the Examiner expressed the view that a Utility patent was not a basis for a priority claim under 35 U.S.C. § 119, and that in United States Patent Office practice the analogue to a United States design patent was considered to be the Geschmacksmuster, since the latter related to ornamental appearance; it was indicated that where a utility and design patent can co-exist, the design application is not entitled to the earlier filing date of the Utility patent. The Examiner twice rejected the claim to a priority date, and requested a new oath; a new oath was filed which, again, recited only No. 1,786,384, and it withdrew the claim for priority. Plaintiff reopened the issue in 1967 by petitioning for a certificate of correction of the effective filing date. The Patent Office rejected the petition both on the ground originally assigned, and on the additional ground that the second German Utility patent was not for the same invention as the United States application. See 37 C.F.R. § 1.153(a).

During the prosecution of the patent the Office required the incorporation of an additional figure to complete the disclosure of the underside of the gripping ledge or pocket at the front. The figure disclosed the gripping ledge or pocket, the very small outward inclination of the front wall (less than 15 degrees from the vertical), the outward (forward) inclination of the lower portions of the extended sidewalls (between 40 and 45 degrees), and the detail of the label frame. The additional figure did not disclose new ornamental matter; it clarified the original disclosure and (evidently) corrected the mistaken impression (produced by the original figure, now Fig. 1 of the patent) that the front wall was vertical. The Office required changes in the language generally in the direction of eliminating language that implied particular structure rather than ornament, and of locking the claim to that which was portrayed in the figures and was described in the specification as the "ornamental design for a combination storing and packing case."

The Office challenged the patentability of the design on the basis of Schultz U.S. No. 1,935,920 (1932, 1933), which exhibited an otherwise conventional fourwalled bread pan, with a rolled lip, in each sidewall of which an inwardly extending stacking ledge was...