Janex Corporation v. Bradley Time

• Decision Date: 20 September 1978
• Docket Number: No. 77 Civ. 966 (M.E.F.).,77 Civ. 966 (M.E.F.).
• Citation: 460 F. Supp. 383
• Parties: JANEX CORPORATION, Plaintiff, v. BRADLEY TIME, Elgin National Industries, Inc., Walt Disney Productions, and Children's Television Workshop, Defendants.
• Court: U.S. District Court — Southern District of New York

460 F. Supp. 383

JANEX CORPORATION, Plaintiff, v. BRADLEY TIME, Elgin National Industries, Inc., Walt Disney Productions, and Children's Television Workshop, Defendants.

No. 77 Civ. 966 (M.E.F.).

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

September 20, 1978.

Lawrence G. Kurland, Maurice B. Stiefel, Hubbell, Cohen, Stiefel & Gross, New York City, for plaintiff.

John M. Calimafde, James M. Rhodes, Jr., Hopgood, Calimafde, Kalil, Blaustein & Lieberman, New York City, for defendants.

OPINION

FRANKEL, District Judge.

On February 25, 1977, plaintiff Janex Corporation commenced this suit against Bradley Time, Elgin National Industries, Inc.,¹ Walt Disney Productions, Inc., and Children's Television Workshop, alleging patent infringement. The patent in dispute is No. 3,835,640, awarded to Alexander W. Hughes, President of Janex, for a character alarm clock with voice associated alarm. The clock, designed for children, is faced with a familiar cartoon character² whose voice serves as the alarm. The case is before the court on defendants' motion for summary judgment on the ground that the patent is void as obvious under 35 U.S.C. § 103.³

I.

In Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966), the Court examined the nonobviousness requirement in 35 U.S.C. § 103 and wrote:

"While the ultimate question of patent validity is one of law, Great A. & P. Tea Co. v. Supermarket Equipment Corp., supra, 340 U.S. 147 at 155 71 S.Ct. 127 at 131, 95 L.Ed. 162 (1950), the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. 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."

This teaching shapes our consideration of defendants' motion.

A. The Patent in Issue

The Hughes patent embodies five claims. Claim 1, which like all five claims is written in characteristically turgid patentese,⁴ describes a character clock with a voice associated alarm. Claim 2 specifies the switching devices which open and close the electrical circuitry. Claims 3 and 4 describe the voice alarm mechanism — record, needle, and diaphragm — and the means for automatically resetting the voice alarm mechanism when the alarm is disabled. Claim 5 describes the means for resetting the voice alarm mechanism when the wake-up message is completed, so it can be repetitively reproduced. According to the patentee, the clock was designed to "solve the problem of waking a child in the morning and, moreover, actually making a child want to set the alarm so that he can be awakened by it." Affidavit of Alexander W. Hughes, at 6.

B. Prior Art

Defendants cite fourteen references — six United States manufacturing patents, three United States design patents, one German patent, and four unpatented devices — as the prior art that renders plaintiff's talking alarm clock obvious.⁵

1. Patent No. 652,156 (1900), issued to E. Treitschke, describes a phonographic clock which announces the time at regular intervals "in a very gentle way" "for the benefit of nervous people."

2. Patent No. 1,382,370 (1921), issued to O. Lindholm, describes a musical alarm clock, employing a full size phonograph to provide "an agreeable substitute for the ordinary harsh and noisy alarm clock."

3. Patent No. 1,424,516 (1922), issued to V. and J. Pinto, describes a clock connected to a phonograph "so that the clock intermittently operates the phonograph." The patentee notes:

"It is obvious that the regular clock actuation to cause half hourly or quarterly announcements can be superseded by an adjustable actuating mechanism for giving an alarm, utilizing the rest of our invention unchanged except as to the announcement or record and that the only changes required for such an alarm would be in the position or character of the actuating devices, forming part of the connection between the clock and the lifting mechanism. We therefore contemplate including herein all such features as are capable of use with actuation for alarm purpose."

4. Patent No. 2,493,138 (1950), issued to B. H. Hathaway, describes a toy clock, faced with pictures of Jack and Jill and twelve barnyard animals; it is rotated by hand while reciting an accompanying teaching jingle.

5. Patent No. 3,135,084 (1964), issued to O. A. Kidder, describes a talking alarm clock which plays a recorded message at selected time intervals during the hour.

6. Patent No. 3,581,410 (1971), issued to W. L. Zeigner et al., describes a hand operated clock attached to a phonograph device that announces the time.

7-9. The three design patents are Design 150,090 (1948) (C. E. Murphy), a clown clock; Design 158,685 (1950) (J. F. Punzak), a bird house clock; and Design 169,947 (1953) (Punzak), an owl clock.

10. German patent No. 922,940 (1954), issued to F. Sauerbrei, et al., describes a figurated clock which employs a magnetic tape to produce a periodic message. The patent specification suggests that the figure should be chosen "to emphasize the advertising text."

11-14. The unpatented devices are the Mattel "talking dolls," introduced in the 1960's; the Bradley "music'n motion" alarm clocks, particularly the "whistling bird musical alarm which cheerfully whistles bird calls from its gilded cage to wake up its proud owner"; talking Bugs Bunny, Woody Woodpecker, Mother Goose and Mrs. Beasly dolls; and the familiar cuckoo clock.

C. The Obviousness of the Differences

While proffering these fourteen prior art references, defendants rely most heavily on comparison of the Hughes patent with the 1922 Pinto patent. Figure 4, taken from the Hughes patent, shows its alarm circuitry.

The clock is set by depressing # 34, an on-off switch, and by setting the windup alarm clock # 12 in the conventional manner. When the clock hands reach the preset time, switch # 32 is tripped, closing the circuit between the clock, the battery source # 38, and the record drive motor # 36 located in the voice box, and thereby activating the prerecorded message.

Figure 8 in the Pinto patent illustrates almost identical circuitry.⁶

# 80 is described as a switch "to open the circuit completely when desired." The alarm trippable switch is shown as # 37 and # 39. # 49 is the phonograph motor and # 74 the battery.

The two patents differ in three basic ways. First, Hughes employs a voice box instead of the "cylinder form of phonograph" found in the Pinto clock. But the Hughes patent specification acknowledges that the talking box device is "conventional," and even lists a manufacturer from whom it can be purchased. Second, while both patents provide a means to reset the phonographic device on the completion of the message, the Hughes talking box resets itself if stopped in mid-message. The third difference is that the Hughes patent provides for a figurated clock with voice associated alarm. Defendants argue that this association of figure with voice was sufficiently foreshadowed by the prior art, particularly by the German advertising clock patent, so as to be obvious under 35 U.S.C. § 103. Plaintiff, bolstering its argument with affidavits from six toy industry veterans, contends that the combination of figure and associated voice in an alarm clock is unique and nonobvious. Both parties, however, have tended to slight the critical legal question on which summary judgment turns: whether some technical accomplishment is required for patentability. Surprisingly, the case law has rarely addressed this question head-on. But implicit in the cases is a negative answer.

Two post-Graham Supreme Court cases teach the need for technical achievement. The first, Anderson's-Black Rock, Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969), involved a patent for the placement of a radiant heat burner on the side of a standard asphalt paving machine. The device, a combination of old elements, solved the problem of the poor bonding between asphalt strips (so called cold strips), which had plagued the paving industry. The Fourth Circuit, recognizing that the patentee had simply put extant technology to new use, nonetheless upheld the patent, 404 F.2d 450 (1968), writing (at 454):

"The District Court * * * viewed the question as if it were known that the answer lay in heat treatment and that a generator * * * would do the job * * *. But the patentee's contribution cannot be judged without reference to its salient feature, disclosure of the fact that the solution lay in the use of a specified kind of infra-red generator with the basic paving machine."

The Supreme Court unanimously reversed. The Court found insufficient for patentability the facts that (1) the plaintiff had conceived the idea of using radiant heat for continuous paving, whereas previously radiant heat had been used only to patch limited areas, and (2) experts had testified to their doubts that radiant heat would solve the cold strip problem. 396 U.S. at 58-59, 90 S.Ct. 305. The use of radiant heat was deemed a "successful venture," not a patentable invention.

The second case is Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976). There, the patent was awarded for a manure flush system that solved a problem "familiar on dairy farms since ancient times" by delivering water directly to the barn floor from a storage tank rather than through pipes or hoses. The Fifth Circuit, while recognizing that all the elements were old, had validated the patent, finding that "the concept of a controlled sheet of water to do the scouring and washing of the floor had not been used in barn construction." 474 F.2d 167, 169 (1973). The Circuit rejected as a test for patentability a showing of some non-trivial...