Hawley Products Company v. United States Trunk Co.

• Decision Date: 27 August 1958
• Docket Number: No. 5339.,5339.
• Citation: 259 F.2d 69
• Parties: HAWLEY PRODUCTS COMPANY et al., Appellants, v. UNITED STATES TRUNK CO., Inc., et al., Appellees.
• Court: U.S. Court of Appeals — First Circuit

259 F.2d 69 (1958)

HAWLEY PRODUCTS COMPANY et al., Appellants, v. UNITED STATES TRUNK CO., Inc., et al., Appellees.

No. 5339.

United States Court of Appeals First Circuit.

August 27, 1958.

John S. O'Brien, Chicago, Ill., with whom Richard L. Johnston, Lloyd C. Root, Chicago, Ill., Herbert P. Kenway, Boston, Mass., Marzall, Johnston, Cook & Root, Chicago, Ill., and Kenway, Jenney, Witter & Hildreth, Boston, Mass., were on brief, for appellants.

Herbert B. Barlow, Providence, R. I., with whom Isador S. Levin, Fall River, Mass., was on brief, for appellees.

Before MAGRUDER, Chief Judge, and WOODBURY and HARTIGAN, Circuit Judges.

WOODBURY, Circuit Judge.

Our primary concern on this appeal is with the validity as a matter of law of the holding of the court below that the single claims of five separate patents covering designs for hand luggage or similar articles are invalid for lack of invention. The patents involved are Des. 168,709 for a portable typewriter case or similar article issued to Jean O. Reinecke and Jon W. Hauser on January 27, 1953, and assigned by them to the appellant Hawley Products Company, and Des. 177,475, Des. 178,889, Des. 179,016 and Des. 179.017 for hand luggage or similar articles issued to the appellant Sol Koffler on April 17, October 2, and the last two simultaneously on October 23, 1956.

During 1957 the owners of these patents with American Luggage Works, Inc., a Rhode Island corporation, brought three suits in the court below for infringement of all but the last of the above listed patents. In the first of these complaints brought by Hawley and American Luggage Works, Inc. (for simplicity American hereinafter), it is alleged that Hawley at all times material was engaged in manufacturing moulded fibrous shells used in the manufacture of typewriter cases and similar articles such as hand luggage which embodied the invention of the Reinecke et al. patent which it owned, and that American was engaged in purchasing those shells from Hawley and assembling them in pairs affixing the necessary hardware thereto and fitting them with attractive linings and then selling the completed product embodying the invention to retail outlets. In this complaint a count for unfair competition is coupled with the count for patent infringement.

In the other two complaints brought by American Luggage Works, Inc., and Sol Koffler it is alleged that Koffler is the president and treasurer of American and that American was and now is engaged in selling and offering for sale luggage embodying the inventions covered in the Koffler patents. There are no counts for unfair competition in these complaints.

The defendants named in all three complaints are United States Trunk Co., Inc., a Massachusetts corporation, Clarke Precision Moulding Corporation, also a Massachusetts corporation, Sydney S. Feinberg, the president, treasurer, general manager and principal stockholder of United States Trunk and the treasurer of Clarke Precision, and Steven Feinberg, Sydney's son, and the president of Clarke Precision.

The fifth patent, Des. 179,017, issued to Koffler came into this litigation in the following way: On March 15, 1957, after a day spent in taking depositions in Providence, Rhode Island, in the suit brought by Hawley et al., counsel for the defendants produced two articles of luggage manufactured by the defendant United States Trunk and asked counsel for the plaintiffs whether in their opinion either infringed any patents owned by their clients. Counsel for the plaintiffs after inspecting the luggage replied that in their opinion both pieces of luggage infringed one or both patents Des. 179,016 and Des. 179,017, and thereupon counsel for the defendants immediately served on the plaintiffs a complaint which they had already prepared praying for a judgment declaring both patents invalid. The defendants answered the complaint in due course admitting that their counsel had stated that the luggage shown to them infringed both the 016 and 017 patents, but averred "that upon further consideration they do not assert infringement by the luggage shown" of the 017 patent. Wherefore they asserted that no actual controversy existed with respect to that patent and so far as it was concerned the suit for a declaratory judgment should be dismissed for lack of jurisdiction. By stipulation the suit for declaratory judgment was transferred by the United States District Court for the District of Rhode Island to the United States District Court for the District of Massachusetts, where it was consolidated for trial with the three other suits pending in that court mentioned above.

At the close of the evidence introduced by the plaintiffs at the trial the court below ruled that Hawley and American had failed to sustain their burden of proving their charge of unfair competition so that on that count of their complaint judgment would have to be entered for the defendants. At the same time the court on motions of the defendants dismissed Clarke Precision Moulding Corporation and Sydney and Steven Feinberg from all the cases. At the conclusion of the evidence the court found that all five of the patents involved were invalid for lack of invention over the disclosures of the prior art, saying that "the design appearances disclosed in each of these patents are plainly within the creative ability of a designer of modest skills, imagination, and originality." It found specifically that the design covered in the Reinecke et al. patent owned by Hawley was not "strikingly novel" in its "visual effect or appearance," but was "a simple, easily conceived combination of well known elements" and that "To accept in this case plaintiff's contention of validity would be to convert the standard of patentability from that of invention over the prior art to that of variation from the prior art," which, as the court quite correctly remarked, "is not permissible."

The remaining four patents were also found invalid for the reason that the designing skills revealed in them were well within the range of ordinary practitioners of the craft exercising merely the skill of their calling and hence were insufficient to meet the "Constitutional and statutory standard" for invention. From a single judgment appropriate to the foregoing findings and rulings, American Luggage Works, Inc., Hawley Products Company and Sol Koffler have taken this appeal.

We shall consider the question of the validity of all five patents first and then take up other asserted errors of the District Court.

The appellants contend that the court below fell into a variety of errors in reaching its conclusion that the patents involved are all invalid for lack of invention. They say that the court violated Title 35 U.S.C. § 282 by ignoring the presumption that patents should be presumed to be valid until their invalidity is established by the party asserting the same, that it applied too strict a test of invention in view of Title 35 U.S.C. § 103 which they assert on the authority of Lyon v. Bausch & Lomb Optical Co., 2 Cir., 1955, 224 F.2d 530, certiorari denied 1955, 350 U.S. 911, 76 S.Ct. 193, 100 L.Ed. 799, was intended to put a stop to the strict application of the test for invention in vogue in recent years and restore the test to what it was when it was first announced in Hotchkiss v. Greenwood, 1850, 11 How. 248, 13 L. Ed. 683, that it erroneously viewed the designs from the vantage point of hindsight, and that even then it did not view the designs disclosed as a whole for their overall effect upon the eye but looked at the particular features of each design separately, that it failed to consider the commercial success of the designs and the tribute accorded to their excellence by the defendants' copying, and that by holding the patents invalid on the basis of the prior art before the Patent Office it erroneously undertook to substitute its judgment for that of the administrative agency expert in its field.

It is true that the court below did not specifically mention any of the foregoing matters. But we can hardly assume that the learned and experienced judge who presided at the trial was unaware of them or ignored them. Instead it would seem that the patents on their faces are so clearly lacking in merit that there was no need to consider anything but the obvious in them and in the immediate prior art of hand luggage to find lack of patentable invention.

Section 171 of Title 35 U.S.C. enacted into law on July 19, 1952, 66 Stat. 792, 805, provides:

"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."

Clearly the import of this language is to require more than mere novelty and originality to support a patent for a design. Novelty and originality there must be, of course, but in addition the statute requires that there must also be that elusive something known as invention. Clearly the statute does not in this respect change the settled law as it stood before the statute was enacted, as to which see General Time Instruments Corp. v. United States Time Corp., 2 Cir., 1948, 165 F.2d 853, 854, certiorari denied, 1948, 334 U.S. 846, 68 S.Ct. 1515, 92 L.Ed. 1770, and cases cited. Thabet Mfg. Co. v. Kool Vent Metal Awning Corp., 6 Cir., 1955, 226 F.2d 207, 211, 212. We agree with the District Court that the patents in suit do not meet the test for invention even when liberally applied.

The Reinecke et al. patent owned by Hawley, Des. 168,709 covers a carrying case having curved surfaces on all four sides so formed as to make the widest part of the case as it stands in a vertical position fall below the center thereof but above the bottom. The appellant Hawley describing this design in its brief says:

"The form has been developed so

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