GB Lewis Company v. Gould Products, Inc.

• Decision Date: 12 January 1971
• Docket Number: Dockets 33299-33302.,No. 159-162,159-162
• Citation: 436 F.2d 1176
• Parties: G. B. LEWIS COMPANY et al., Plaintiffs-Appellants, v. GOULD PRODUCTS, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

436 F.2d 1176 (1971)

G. B. LEWIS COMPANY et al., Plaintiffs-Appellants, v. GOULD PRODUCTS, INC., Defendant-Appellee.

Nos. 159-162, Dockets 33299-33302.

United States Court of Appeals, Second Circuit.

Argued October 29, 1970.

Decided January 12, 1971.

James G. Staples, Chicago, Ill. (Parker, Carter & Markey, Chicago, Ill., Joseph D. Garon, William A. Victor, Brumbaugh, Graves, Donohue & Raymond, New York City, of counsel), for plaintiffs-appellants.

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

Before MOORE, FRIENDLY and ADAMS,^* Circuit Judges.

FRIENDLY, Circuit Judge:

Plaintiff G. B. Lewis Company¹ manufactures and markets, under the trade name Plastibox, a line of plastic bins, whose design as a "combination storing and stacking case," is allegedly covered by United States Design Letters Patent No. 191,144, issued to Gunter Schanz.² It brought an action for patent infringement in the District Court for the Eastern District of New York, pursuant to 28 U.S.C. §§ 1338 and 1400 and 35 U.S. C. §§ 271, 281, against Gould Products, Inc., which also produces a line of plastic bins, marketed under the trade name Duralene. The district court granted defendant's motion for summary judgment on the grounds that plaintiff's patent was invalid both for lack of invention and because Schanz had applied in Germany for registration of the storing and stacking case as a "Gebrauchsmuster" on April 26, 1958 and also as a "Geschmacksmuster" on May 27, 1958, more than six months before his application in the Patent Office, 35 U.S.C. §§ 102(d) and 172, and also for lack of sufficient similarity between the plaintiff's patent (which was argued to differ from the articles being marketed) and the accused products to support the claim of infringement. G. B. Lewis Co. v. Gould Products, Inc., 297 F.Supp. 690 (E.D.N. Y.1968). Plaintiff appealed, challenging each of the court's determinations. We hold that Judge Dooling properly found lack of invention and therefore affirm the judgment, without reaching the other grounds which he held would also require it.

Plaintiff's storing and stacking case is a rectangular plastic box, open at the top, with an extended and slightly raised frontal portion which reaches about half the height of the side and rear walls. The frontal portion, which forms a wedge-shaped inverted pocket on its underside providing a convenient drawer-pull or fingerhold, terminates in a flattened oblong band containing a frame molded to accommodate a slide-in label. The top edges of the side and rear walls are crimped outward, producing a banding effect around the top. Vertical ribs are located along the outside of the side and rear walls.

Under 35 U.S.C. § 171, "any new, original and ornamental design for an article of manufacture" is patentable if it also satisfies the other provisions of Title 35 for the granting of patents, with exceptions not here relevant. One such provision is 35 U.S.C. § 103 which denies patentability when

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. * * *

In Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545 (1966), the Supreme Court stated that this provision, added in 1952, 66 Stat. 798, "was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability."

The determination required by Hotchkiss,³ elusive in any case, is particularly so with respect to a design patent. We have frequently indicated that the requirement of invention is not met by a design which is merely "new and pleasing enough to catch the trade"; rather we have insisted that the design reflect "some exceptional talent beyond the skill of the ordinary designer," Neufeld-Furst & Co. v. Jay-Day Frocks, Inc., 112 F.2d 715, 716 (2 Cir. 1940), or "inventive genius," A. C. Gilbert Co. v. Shemitz, 45 F.2d 98, 99 (2 Cir. 1930). We have noted that in view of this "to obtain a valid design patent is exceedingly difficult." Chas. D. Briddell, Inc. v. Alglobe Trading Corp., 194 F.2d 416, 419 (2 Cir. 1952). It is with these principles in mind that we approach the district court's determination that plaintiff's Schanz patent is invalid for want of the novelty, originality, and ornamentality required by 35 U.S.C. § 171 and the nonobviousness required by 35 U.S. C. § 103.⁴

The district court relied on four references — three of which were cited by the patent office on the original application — in finding that all but one of the essential elements of the Schanz patent were anticipated by prior art. Schultz and Woods exhibited the banding effect on the top of Schanz' box; Salome and Shaw revealed the front half wall; and the only other element worthy of mention — the flattened front band carrying the label frame — was found to be "immediately obvious from conventional index drawer design and drawerpull design, and * * * wholly wanting in ornamental ingenuity." 297 F.Supp. at 695.

While plaintiff complains that the prior art does not precisely anticipate the Schanz design, as, indeed, the district court conceded, 297 F.Supp. at 695, its more serious contention is that, acknowledging the possibility that a patent may be invalidated by a combination of references, in this case the piecemeal application of known features from the prior art reflects the clear vision of hindsight rather than the application of existing knowledge by a skilled craftsman. It argues that nothing in the prior art produced the overall ornamental unity reflected in the predominance of straight clean lines and right angles such as may be found in its storing bin. Assuming, however, that the prior art did not embody in every detail plaintiff's self-styled "square shoulder" design concept, we find no fault with Judge Dooling's conclusion that the Schanz design cannot be considered an unobvious ornamental advance over prior art structures, in light of the fact that the essential elements of plaintiff's box were anticipated by the references noted above. As this court said in Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 696 (2 Cir. 1961):

Reference to the prior art discloses that plaintiff\'s pitcher is a combination of features of containers which were well known before plaintiff\'s production was begun. Of course, the mere fact that a person has utilized in combination a number of elements which severally were well known will not defeat the patentability of the combination. * * * But the utilization of old elements in combination must represent an

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