Horwitt v. Longines Wittnauer Watch Co., Inc., 70 Civ. 4844.

• Decision Date: 22 January 1975
• Docket Number: No. 70 Civ. 4844.,70 Civ. 4844.
• Citation: 388 F. Supp. 1257
• Parties: Nathan G. HORWITT, Plaintiff, v. LONGINES WITTNAUER WATCH CO., INC., et al., Defendants.
• Court: U.S. District Court — Southern District of New York

388 F. Supp. 1257

Nathan G. HORWITT, Plaintiff, v. LONGINES WITTNAUER WATCH CO., INC., et al., Defendants.

No. 70 Civ. 4844.

United States District Court, S. D. New York,

January 22, 1975.

Eleanor Jackson Piel, New York City, for plaintiff.

Julius Zizmor, New York City, for defendants.

WHITMAN KNAPP, District Judge.

Plaintiff — the owner of U. S. Patent No. 183,488 for the design of a watch face devoid of any hour indices save a single dot at the 12 o'clock position — is suing the defendants for patent infringement. The defendants, in turn seek a declaration that plaintiff's patent is invalid. The action was tried to the court on October 30 and 31, 1974 and decision was reserved pending receipt by the court of the parties' post-trial memoranda.

There is one procedural matter which must be resolved at the outset. On the eve of trial, plaintiff moved for leave to amend the caption of his complaint to correct a mistake concerning the identity of one of the proper party defendants by substituting Piaget Watch Corporation ("Piaget") as a defendant for and instead of North American Watch Corporation ("North American"), with the amendment relating back to the date of the filing of the original complaint. Plaintiff is not seeking by this motion to do anything more than amend the caption of the complaint — he does not seek to alter the body thereof in any way, other than to correct the defendants as named.

It is conceded that the applicable six year statute of limitations has expired and that the complaint can be amended to bring in Piaget as a defendant only if the amendment relates back to the commencement of the action. Determination of the motion is, therefore, governed by Rule 15(c) of the Federal Rules of Civil Procedure, which states that when the claim asserted in the amended pleading "arose out of the conduct, transaction, or occurrence" set forth in the original pleading, an amendment changing the party against whom the claim is asserted shall be deemed to relate back if two conditions are met. If, "within the period provided by law for commencing the action," the party to be substituted

"(1) has received such notice of the institution of the action that he will not be prejudiced in maintaining his defense on the merits, and (2) knew or should have known that, but for a mistake concerning the identity of the proper party, the action would have been brought against him."

We think it too clear for argument that Piaget received notice of the action by virtue of service on North American. Defendant conceded as much when it acknowledged that plaintiff served the human being who would have been proper to serve for Piaget (Tr., p. 10). Piaget, a wholly-owned subsidiary of North American, shares with its parent not only its office address but its corporate management. For example, the same man — Gedalio Grinberg — is President of both corporations. Although Piaget is not named in the caption as a defendant, it is repeatedly referred to as a defendant in the body of the complaint. Counsel for North American apparently compounded the misunderstanding by assuming that Piaget was a defendant and referred to it as such on more than one occasion in correspondence with plaintiff's attorney. This final fact alone would seem to satisfy the second requirement of knowledge. F.R.C.P. 15(c)(2).

With respect to the notice requirement, the papers in opposition to this motion failed to establish any facts showing that Piaget would be prejudiced in its ability to conduct a defense on the merits. On that basis, I proceeded with the trial of the action — pending my decision on this motion and subject to Piaget's objections — at the conclusion of which it was apparent that Piaget's defense was in no way prejudiced by the lack of formal service upon it. Plaintiff's motion is, accordingly, granted. Wirtz v. Mercantile Stores Inc. (E.D. Okla.1967) 274 F.Supp. 1000, 1001; cf. Bernstein v. Uris Buildings Corp. (S.D. N.Y.1970) 50 F.R.D. 121; Marino v. Gotham Chalkboard Mfg. Corp. (S.D.N. Y.1966) 259 F.Supp. 953.

PATENT VALIDITY

Before addressing ourselves to the question of infringement, we must first discuss the issue of the validity of plaintiff's design patent. We begin our discussion with the statutory presumption of validity. 35 U.S.C § 282. Although such presumption has no independent evidentiary value, it does serve to place the burden of proof on the party asserting invalidity. Rains v. Niaqua, Inc. (2d Cir. 1969) 406 F.2d 275. As the court observed in Rains (at 278):

"Reasonable doubt on the issue of validity must be resolved in favor of the patent holder, but in the usual case a preponderance of the evidence determines the issue." (citations omitted)

With that as a background, we turn now to the merits of defendants' challenge to the validity of plaintiff's patent. Their contention is that the watch-face design was fully anticipated by prior art, and is therefore invalid under 35 U.S.C. § 103, which states that a patent may not be obtained

"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 such subject matter pertains."

At the trial of the matter, defendants introduced into evidence only two examples of what they claim to be prior art, both of which consist essentially of bare-faced watches. The first—Junghans, U. S. Patent No. 911401 (1909) — consists of a blank watch face with "luminous material" disposed on it, with no hour indices of any sort. The second — a Swiss "jump-hour" watch, circa 1825 — also consists of a watch face devoid of hour indices save a small window slightly above center through which the hours can be read. There also is a rather large dial-ette in the lower center of the watch face, which indicates the minutes. When the minute hand passes the "60" mark, the old numeral in the hour window disappears and the new hour jumps into view. Although both these watches lack customary hour indices — a feature they have in common with plaintiff's design — neither watch has the feature which distinguishes plaintiff's watch from the prior art: the small "dot" at the 12 o'clock position, which apparently serves as a reference point for the user in telling time.

In its initial rejection of plaintiff's application, the Patent Office cited six¹ examples of prior art, which in its opinion

". . . show that it is old to employ circles on dial faces of timepieces either alone or combined with numerals and, in view of item No. 56C53 of the Hagn publication which discloses a clock face having thereon a single circular marking placed above the hands, no invention is deemed to be involved in omitting all but one of the circular hour markings on the watch face of the type shown by the Hamilton watch of record a watch entirely without numerals." Examiner's Answer, Appeal No. 8744, mailed 8/28/57.

The Patent Office Board of Appeals, however, reversed the Examiner's decision. In refusing to sustain his rejection of plaintiff's claim, the Board agreed with plaintiff that

"merely because the prior art may show clock and/or watch faces with numerals and dots, or numerals alone, or dots alone to indicate each of the twelve hours, or may have numerals representing the twelve hours in association with a single dot-like area that this sic provides no suggestion for making a watch with only a single dot on the face thereof in addition to the hands."

The Board went on to conclude that plaintiff's design was

"a concept directly contrary to the teachings of the prior art and thus would not occur to a routine designer in the exercise of his trade, and that it has resulted in a unique design in no way resembling the dials relied upon by the examiner. In our opinion, appellant's design is distinctive, ornamental and aesthetically pleasing, and when viewed as a whole, in no way gives an impression of merely being a modification of any design upon which the examiner relies."

For the reasons set forth below, we concur with the Board's opinion.

Section 171 of Title 35 provides that in order for a design to be patentable it must be "new, original and ornamental". As each of these elements represents a separate and distinct test of patentability, they will be treated individually. Schnadig Corporation v. Gaines Manufacturing Co., Inc. (6th Cir. 1974) 494 F.2d 383, 387.

The issue of novelty is resolved by visual comparison of the challenged design with prior designs. To be patentable, the design viewed as a whole "must produce a new impression upon the eye", and upon the eye of the "ordinary or average observer, not the expert". Deller's Walker on Patents, Vol. 2, p. 748. More specifically,

"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." Thabet Manufacturing Company v. Kool Vent Metal Awning Corporation of America (6th Cir. 1955) 226 F.2d 207, 212.

This is the prevailing test. Schnadig Corporation v. Gaines Mfg. Co., Inc., supra, 494 F.2d at 389, Rains v. Cascade Industries, Inc. (3d Cir. 1968) 402 F.2d 241, 247, Hygienic Specialties Co. v. H. G. Salzman, Inc. (2d Cir. 1962) 302 F.2d 614, 617, Application of Bartlett (1962) 300 F.2d 942, 943, 49 CCPA 969. As an "ordinary observer" — and not as an "expert", by any means — I find that plaintiff's design meets this test. A design is not anticipated merely because some or all of its elements are old, since the essence of design lies in its appearance as a whole. Gorham Co. v. White (1871) 14 Wall. 511, 81 U.S. 511, 20 L. Ed. 731, Blisscraft of Hollywood v. United Plastics Co. (2d Cir. 1961) 294 F.2d 694. As the Court observed in Blisscraft (at 696),

". . . the mere fact that a person has utilized in combination a number of elements which severally were well known will not

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