Jerrold Stephens Co. v. Alladin Plastics, Inc.

• Decision Date: 18 May 1964
• Docket Number: No. 62-208.,62-208.
• Citation: Jerrold Stephens Co. v. Alladin Plastics, Inc., 229 F.Supp. 536 (S.D. Cal. 1964)
• Court: U.S. District Court — Southern District of California
• Parties: JERROLD STEPHENS CO., Inc., Plaintiff, v. ALLADIN PLASTICS, INC., Defendant.

229 F. Supp. 536

JERROLD STEPHENS CO., Inc., Plaintiff, v. ALLADIN PLASTICS, INC., Defendant.

No. 62-208.

United States District Court S. D. California, Central Division.

May 18, 1964.

Fraser & Bogucki, Los Angeles, Cal., for plaintiff.

Bernard Kriegel, Los Angeles, Cal., for defendant.

HALL, Chief Judge.

The plaintiff's Complaint asks for declaratory relief to the effect that Patent No. 192,029 is invalid, and for injunction against unfair competitive practices, and for damages.

Defendant answered, denying the invalidity of the design patent, denying unfair competition, and counter-claimed for patent infringement of the above-mentioned Patent Design 192,029 and Patent No. 3,032,375 and Patent No. 3,034,830 for unfair competition and for infringement of trademark No. 736,402 for the words "FORM-FIT."

Plaintiff has filed a motion for partial summary judgment under Rule 56, F.R. C.P., on the counter-claims asserted against plaintiff by the defendant.

The motion for summary judgment is based on several grounds as to each patent, one of which, in each instance, is that none of the patents disclose a standard of invention sufficient to sustain the validity of any one of the three patents, and that such determination can and should be made as a matter of law and not as a matter of fact.

Prior to December 4, 1950, when the Supreme Court handed down its decision in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162, the Ninth Circuit, in a series of cases, had held that the question of invention was a question of fact. Ralph N. Brodie Co. v. Hydraulic Press Mfg. Co. (9 Cir.1945) 151 F.2d 91; Maulsby v. Conzevoy (9 Cir.1947) 161 F.2d 165; Refrigeration Eng. v. York Corp. (9 Cir.1948) 168 F. 2d 896; Faulkner v. Gibbs (9 Cir.1948) 170 F.2d 34; Lane-Wells Co. v. M. O. Johnston Oil etc. Corp. (9 Cir.1950) 181 F.2d 707.

Since that time, that Court has consistently held in the trial of a patent case, that the Court must decide, as a matter of law, whether or not the patents disclose that "standard of invention" necessary to sustain the validity of the patent.

Thus, of necessity, the Court must decide that question of law before reaching any questions of fact that may be present in a patent case.

The "standard of invention" is written into the Constitution Oriental Foods Inc. v. Chun King Sales, Inc. (9 Cir. 1957), 244 F.2d 909 which provides Art. 1, Sec. 8, Cl. 8 that the writings and discoveries which Congress was authorized to protect by a patent monopoly must be such as to "promote the Progress of Science and useful Arts."

The current and accepted interpretation of this clause as it may be distilled from the Supreme Court Opinion in 1950 in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, and cases cited therein and following it, while variously stated, is, in sum, that the Constitutional "standard of invention" in a patent must present "unusual and surprising consequences;" it "must add to the sum of useful knowledge;" it "must serve the ends of science — push back the frontiers of chemistry, physics and the like;" it "is not enough that it be new and useful;" it "must make a distinct contribution to useful knowledge;" "there must be more ingenuity involved than that of the mechanic skilled in the art." Finally, in that case, in the concurring opinion of Justice Douglas, he saw fit to warn as to loose standards of patentability, (which warning is very apt in the instant case), and to quote from the earlier case of Atlantic Works v. Brady (1882) 107 U.S. 192, at page 200, 2 S.Ct. 225, 27 L.Ed. 438, as follows:

"`It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct then to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith.'"

And in Sears Roebuck & Co. v. Stiffel, decided March 9, 1964, 376 U.S. 225, page 230, 84 S.Ct. 784, page 788, the Court reiterated that: "To begin with, a genuine `invention' or `discovery' must be demonstrated `lest in the constant demand for new appliances the heavy hand of tribute be laid on each slight technological advance in an art.' Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 92, 62 S.Ct. 37, 41, 86 L.Ed. 58 (1941); see Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152-153, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950); Atlantic Works v. Brady, 107 U.S. 192, 199-200, 2 S.Ct. 225, 230-231, 27 L.Ed. 438 (1883)."

In the instant case, there is no genuine issue concerning the fact of the granting of the patents, nor is there any genuine issue as to what they cover or attempt to cover.

Design Patent 192,029 is a design patent for a molded plastic seat of bucket shape, with four straight legs.

Patent No. 3,032,375 covers a chair readily assemblable from a knockdown condition comprising a seat constituted by a plastic seating member, and rigid tubular legs, the upper end of each of which is split by a somewhat elongated slot of sufficient length so that when they are inserted into the leg-receiving sockets, the slots more or less close.

Patent No. 3,034,830 is described as a patent for a molded plastic seating unit.

To paraphrase from Syracuse v. Paris (9 Cir.1956), 234 F.2d 65, "one look" at the chairs is enough to convince the Court that the patent lacks the "standards of invention" that the United States laws are intended to protect.

Bucket seats, as they are now commonly called and which are the type of seat described in each of the patents, are seats shaped in whole or in part to more or less fit the contour of the human anatomy, and have been commonly known and used "'til the...