Hadco Products, Inc. v. Lighting Corp. of America, Inc.

• Decision Date: 02 April 1970
• Docket Number: Civ. A. No. 39056.
• Parties: HADCO PRODUCTS, INC. v. LIGHTING CORPORATION OF AMERICA, INC.
• Court: U.S. District Court — Eastern District of Pennsylvania

312 F. Supp. 1173

165 USPQ 496

HADCO PRODUCTS, INC. v. LIGHTING CORPORATION OF AMERICA, INC.

Civ. A. No. 39056.

United States District Court, E. D. Pennsylvania.

April 2, 1970.

COPYRIGHT MATERIAL OMITTED

Robert B. Washburn, and John J. Mackiewicz, Philadelphia, Pa., for plaintiff.

Arthur H. Seidel, Philadelphia, Pa., for defendant.

OPINION

BODY, District Judge.

This is an action for the infringement of Design Patent No. 199,143, applied for by Howard A. Daum on April 26, 1963 and issued to him on September 15, 1964.¹ The design involved is directed to a "Tudor" lighting fixture appropriate for both indoor and outdoor use. Plaintiff seeks treble damages under 35 U.S. C. § 284 and an accounting under § 289 of that title. It also seeks injunctive relief and the award of reasonable attorney fees.

The defendant by way of counterclaim seeks a declaratory judgment that the patent is invalid. It asserts as defenses and in support of such a declaration (1) obviousness, (2) insufficient disclosure, (3) indefiniteness, (4) new matter, (5) double patenting, (6) non-infringement, (7) the Muncie Gear doctrine and (8) plaintiff's failure to file a supplemental oath. The defendant also seeks the award of reasonable attorney fees in the event it is victorious.

The design in question is suggestive of old English architecture and is embodied in a lighting fixture comprising a base, a cage, a roof, a vent cap, and a finial. The base is round in shape, presenting in profile a smooth curve which is relatively sharp at the top and relatively flat at the bottom. The cage forms a regular hexagon with ribs inclining upwardly and outwardly from each corner of the bottom. The roof has an outwardly flared bottom portion with horizontally projecting eaves which overhang the cage and terminate in sinusoidally curved edges. The sides of the roof correspond in number to the sides of the cage, each presenting in profile a smooth curve relatively flat at the top and relatively sharp at the bottom. The upper surfaces of the eaves adjacent to the outer edges thereof are alternately raised and depressed to form a series of triangular accents separated by U-shaped indentations known as scallops. The design also includes a series of six simulated ventilators of triangular configuration, each smoothly curved in profile and set out from the panels of the roof. The roof has superimposed thereon a vent cap with an outwardly flared bottom portion. It too corresponds in number of sides to the cage and has superimposed upon it a pointed finial having six sides and an outwardly flared lower portion.

As usual, plaintiff claims the ornamental design for a lighting fixture "substantially as shown and described."

SUBSTANTIVE DEFENSES

Obviousness

Since the defendant does not question the novelty, originality or ornamentality of the patent in suit,² we may focus immediately on the issue of obviousness. The Patent Act of 1952 provides for evaluation of the inventive element of a patent as follows:

"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. * * *" 35 U.S.C. § 103.

In addition, the Supreme Court has directed that our inquiry concerning obviousness take the following form:

"Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined." Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966).

The defendant has offered as prior art eleven primary items and fourteen secondary items. We deem it necessary to consider only items 3, 6, 7, 16, 19 and 21(a) in order to define the scope and content of the prior art.

Figure No. 1421 in item #3 appears on page 26 of the 1946 Progress³ Catalog #40. It is a wall lighting fixture having an hexagonally shaped cage with ribs inclining upwardly and outwardly from the bottom thereof. The ribs themselves are ornamented, and additional ornamental metalwork occupies the horizontal space between the ribs at their upper extremities and extends down over a portion of the intervening vertical panes of glass. This fixture also has a six-sided roof with each panel thereof flaring downwardly and outwardly in a straight line from the top and exhibiting a simulated ventilator set out from its upper surface.

Item #6 is an enlargement of figure No. 469 in item #5. It appears on page 17 of Herwig Catalog #60 and is also a wall lighting fixture. It would seem to have a four-sided cage with ribs at each corner thereof, inclining upwardly and outwardly from the bottom. The fixture is characterized by a round conical roof which flares downwardly and outwardly from the top, presenting a flat and somewhat uneven curve in profile. The lower portion of the roof overhangs the cage and terminates in a wavily curved edge.

Item #7 is a photograph of a lighting fixture affixed to the St. James Lutheran Church in Philadelphia. This fixture exhibits a straight, vertical omni-sided cage with ribs at its corners and an additional such rib located between the corner ribs for each side. Some of the intermediate ribs extend up through the lower portion of the overhanging roof and terminate in fleur-de-lis ornaments. Further ornamentation of the intermediate ribs is achieved by varying their predominantly rectangular configuration with a twisted middle section. A thin twisted length of metal horizontally encircles the cage at its upper and lower ends. A cone-shaped roof, corresponding in number of sides to the cage, flares downwardly and outwardly, its lower portion overhanging the cage and terminating in decoratively patterned edges. Horizontally encircling the cage below the overhanging portion of the roof is a vertically depending, ornamented metal skirt, while set out from at least one side of the roof is a simulated ventilator. Superimposed upon and overhanging the upper portion of the roof is a vent cap corresponding in miniature to the design of the roof, except for the absence of simulated ventilators. An ornate fleur-de-lis finial styled in the motif of the intermediate ribs is in turn mounted upon the vent cap.

Item #16 incorporates two views of a lighting fixture sold by the plaintiff in 1961. It too has an elongated, omni-sided cage with straight vertical ribs at each corner. As with the lighting fixture affixed to St. James Lutheran Church, it has a roof which corresponds in number of sides to the cage and declines downwardly and outwardly in a straight line until reaching the top of the cage and terminating in slightly scalloped edges. This Hadco fixture has a vent cap superimposed upon and corresponding in miniature to the design of the roof.

Item #19, and more specifically figures 066 and 067 therein, show variations of a lighting fixture having a multi-sided conical roof. Each side descends downwardly and outwardly in a straight line, terminating in sinusodially curved edges. Alternate sides exhibit simulated ventilators set out from their respective planes.

Finally, item #21(a) constitutes an enlargement of a photograph taken from a metalwork scrapbook. It shows a lighting fixture having a small multisided roof which exhibits a gradual bell-shaped curve downward and outward from its top. Set out from each panel of the roof is a simulated ventilator, purporting to follow ever so slightly the curve of the roof.

Summarizing, then, the level of ordinary skill in the art included the ability to design different lighting fixtures of somewhat varying styles having as their component elements a base, a cage, a roof, a vent cap, and a finial. Hexagonal cages of the type employed by Daum were known and commonly employed by other lighting fixture designers a number of years prior to the filing of his application for the patent in suit. Also, roofs corresponding in number of sides to the cage and exhibiting simulated ventilators set out from each panel thereof were a known quantity in lighting fixture design more than a year before the filing of this patent application. It is further true that such roofs were often conical in shape. Moreover, vent caps were commonly superimposed on the roofs of lighting fixtures, paralleling them in some aspects of design. Lastly, the devices of a finial and base were routinely used to complete the design and give it a sense of balance.

In contrast, however, there are many characteristics of the patent in suit which set it apart from the prior art and which, when taken together, make it nonobvious to a person of ordinary skill in the art.

Recently the Supreme Court was called upon to interpret the statutory test for nonobviousness in a series of non-design cases.⁴ Much of what was said in those cases is difficult to apply in design cases because of the inherent differences between design and non-design patents.⁵ The requirement of advancement, present in the constitutional standard of patentability,⁶ seems to have far less practical application in design cases. Moreover, if the Constitution requires that a patent advance or add to the sum of useful knowledge, how can any design patent be constitutional? For, how can a design add to the sum of useful knowledge when a disclosure is merely an artist's view of the device and the patent protection runs only to the ornamental features of the article and not the article itself?⁷ On the other hand, if merely a change in design is thought to satisfy the requirement of adding to the sum of useful knowledge, then the only test of...