HOLLISTER, INCORPORATED v. Tran-Sel, Inc.

• Decision Date: 09 September 1963
• Docket Number: Civ. A. No. 4434.
• Citation: 223 F. Supp. 141
• Parties: HOLLISTER, INCORPORATED v. TRAN-SEL, INC. and Lorene Laugherty.
• Court: U.S. District Court — Eastern District of Tennessee

223 F. Supp. 141

HOLLISTER, INCORPORATED v. TRAN-SEL, INC. and Lorene Laugherty.

Civ. A. No. 4434.

United States District Court E. D. Tennessee, N. D.

September 9, 1963.

H. M. Harton, Jr., Knoxville, Tenn., William J. Stellman, James R. Sweeney, Hofgren, Brady, Wegner, Allen & Stellman, Chicago, Ill., for plaintiff.

Ivan T. Privette, Knoxville, Tenn., J. Preston Swecker, William L. Mathis, Washington, D. C., for defendants.

ROBERT L. TAYLOR, Chief Judge.

Hollister, Incorporated, an Illinois corporation, with principal place of business in Chicago, Illinois, has sued Tran-Sel, Inc., a Tennessee corporation with principal place of business in Knoxville, Tennessee and Lorene Laugherty, individually, who is a citizen of Knoxville, Tennessee, for damages for infringement of U. S. Letters Patents D-190,157 and D-190,787 issued respectively on April 25, 1961 and June 27, 1961 and, in a second cause of action, for unfair competition. An injunction was requested. During the course of the trial, plaintiff abandoned its claim for damages and now seeks only a permanent injunction requiring modification of the alleged infringing devices to end the alleged confusion between the products of the two parties.

The plaintiff will be referred to herein as Hollister; the defendant Tran-Sel, Inc., as Tran-Sel; and the defendant Lorene Laugherty, as Laugherty. Patent D-190,157 will be referred to as '157; and Patent D-190, 787, as '787.

The defenses as to the patents are invalidity and noninfringement; and as to the second cause of action that there has been no unfair competition. Defendant Tran-Sel in a counterclaim charged plaintiff with violation of the antitrust laws in bringing suit for patent infringement and unfair competition against former employees who engaged in competition with plaintiff.

Each patent was for a design, No. '157 to Bowen being for a "Holder for Cards Prescribing a Hospital Patient's Treatment;" and No. '787 to Schneider being for an "Umbilical Cord Clamp." Under Title 35 U.S.C. § 171, "Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefore, * * *."

No. '157, The Bed Sign Patent

The invention claimed in No. '157 was for an overall ornamental design for a hospital bed sign. The device as disclosed comprised a plastic holder with four slots and transparent windows for each behind which could be inserted an identification card for the patient and three additional cards indicating the condition of the patient or treatments to be given him. There was nothing new about its function, the plaintiff having prior to 1961 marketed a flat bed sign containing these features. No. '157 tilted the windows so that when the holder was fastened to the bed or wall the information behind the transparent window could be more easily read.

Sales by the plaintiff of products covered by the '157 patent in suit for the last several years have been considerable and approximate 18,000 per year.

Plaintiff is extensively engaged in the hospital supply business and sells products throughout the United States, Canada and several foreign countries. Other companies in the hospital supply field have been and are selling bed signs for patient identification purposes. The flat bed sign sold by plaintiff prior to the sign claimed in No. '157 is still available. The sales of the bed sign covered by the '157 patent in suit have far exceeded the sales of the flat bed signs.

Defendants have relied upon the following patents as anticipating claims of the patents in suit:

                Patent No.       Inventor        Issue Date
                Des. 129,502     Wright          Sept. 16, 1941
                     652,771     Harte           July 3, 1900
                     661,325     Roth            Nov. 6, 1900
                   1,418,787     Grambow         June 6, 1922
                   1,659,509     Ashbrook        Feb. 14, 1928
                       8,096     British Pat.    1910
                     301,615     Swiss Pat.      Nov. 16, 1954
                     475,488     Italian Pat.    Oct. 30, 1952
                

The Italian patent 475,488, issued October 30, 1952, was the principal one relied upon by defendants as anticipating the claims of the patent in suit. This patent covered a small sign having a slanted slot for receiving price information. The overall appearance of the small sign show in the Italian patent is similar to the appearance of a single tier or section of the sign shown in the Bowen patent in suit.

Various kinds of bed and other similar signs have been in use for many years.

It must be borne in mind that Patent No. '157 does not claim the function of the device depicted therein, only its design. We find no patent among those cited which precisely anticipates the design of No. '157 although there are obvious similarities both in function and appearance. But this is not enough. Section 171 requires that the design be "new, original and ornamental."

In Thabet Mfg. Co. v. Kool Vent Metal Awning Corp., 226 F.2d 207, 211, 212 (C.A. 6), our Court of Appeals said:

"* * * The statute contemplates appearance rather than utility. The thing invented for which a design patent is given is that which gives a distinctive appearance to the article to which it may be applied. Gorham Mfg. Co. v. White, 14 Wall. 511, 81 U.S. 511, 524-525, 20 L.Ed. 731; Cavu Clothes v. Squires, Inc., 6 Cir., 184 F.2d 30, 32-33.

"A design patent must disclose inventive originality in design and ornamentation; mere mechanical skill is no more sufficient to constitute inventive art in the case of the design artist than in the case of the engineer. Capex Co. v. Swartz, 7 Cir., 166 F.2d 5, 6; Western Auto Supply Co. v. American-National Co., 6 Cir., 114 F.2d 711; Cavu Clothes v. Squires, Inc., supra.

"A design patent must be possessed of novelty; the adaptation of old devices to new purposes, however convenient or useful they may be in their new role, is not invention. Western Auto Supply Co. v. American-National Co., supra; Imperial Glass Co. v. A. H. Heisey & Co., 6 Cir., 294 F. 267. The degree of difference required to establish novelty occurs when the average observer takes the new design for a different, and not a modified already existing design. Application of Johnson, 175 F.2d 791, 792, 36 C.C.P.A., Patents, 1175; Application of Abrams, 205 F.2d 202, 203, 40 C.C.P.A., Patents, 1045. The fact that a design may be distinguished from those found in the prior art does not import the required novelty and ornamentation; its overall aesthetic effect must represent a step which has required inventive genius beyond the prior art. Burgess Vibro-crafters, Inc., v. Atkins Industries, 7 Cir., 204 F.2d 311, 314."

The Court went on to say that although there was a difference in general appearance, it did "not regard the difference as substantial enough to have required the exercise of the inventive faculty."

In Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 696 (C.A. 2), the Court said:

"* * * 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. Graff, Washbourne & Dunn v. Webster, 2 Cir., 1912, 195 F. 522, 523. But the utilization of old elements in combination must represent an exercise of inventive skill and creative talent beyond that of the ordinary designer chargeable with knowledge of the prior art. International Silver Co. v. Pomerantz, 2 Cir., 1959, 271 F.2d 69, 71; General Time Instruments Corp. v. United States Time Corp., 2 Cir., 165 F.2d 853, 854, certiorari denied 1948, 334 U.S. 846, 68 S.Ct. 1515, 92 L.Ed. 1770. What plaintiff did amounted to nothing more than an unstartling regrouping of old elements which demonstrated no originality born of inventive faculty. This is not enough. Knickerbocker Plastic Co. v. Allied Molding Corp., 2 Cir., 1950, 184 F.2d 652, 655. It is not sufficient that plaintiff has shown the talent of an adapter; a manifestation of the art of the inventor was required. * * *"

See also Hygienic Specialties Co. v. H. G. Salzman, Inc., 302 F.2d 614, 618 (C.A. 2); Burgess Vibrocrafters v. Atkins Industries, 204 F.2d 311, 314 (C.A. 7); Gorham Mfg. Co. v. White, 14 Wall. 511, 81 U.S. 511, 20 L.Ed. 531; Smith v. Whitman Saddle Co., 148 U.S. 674, 13 S.Ct. 768, 37 L.Ed. 606; Elite Mfg. Co. v. Ashland Mfg. Co., 235 F. 893 (C.A. 6).

With these standards in mind, the Court is of the opinion that No. '157 does not show inventive originality in design and ornamentation. Although the design of the patent may be distinguished from the design of the flat sign sold by plaintiff long before the Bowen patent application, the overall effect of the design shown in the patent does not show advancement in the design of bed signs which required inventive genius beyond the prior art. The only substantial difference between the design of the Bowen patent in suit and the design of the flat bed sign marketed by plaintiff for many years is the slanted slot feature which was induced by functional considerations rather than design novelty. As was indicated in Elite Mfg. Co. v. Ashland Mfg. Co., supra, the creation of a bed sign with tilted slots did not call for an exercise of the creative faculty. Originality is wanting. The beauty, or in terms of the modern statute, the "ornamental" quality, of the design is not impressive. The patent must be held invalid.

Tran-Sel has manufactured and sold, since the issuance of the '157 patent in suit and prior to the filing of this action, a bed sign substantially identical with the bed sign shown in the '157 patent in suit, and if we are mistaken in our conclusion that the bed sign is not patentable, then the bed sign manufactured and sold by defendant, Tran-Sel, Inc., infringes the bed sign manufactured and sold by the plaintiff.

No. '787, The Cord Clamp Patent

The invention claimed in No. '787 is the overall ornamental design for a funis clamp used to tie off the umbilical cord of a new born infant. Sales by plaintiff of cord clamps covered by No....