Knapp v. Will & Baumer Co.

• Decision Date: 09 March 1921
• Docket Number: 118.
• Citation: 273 F. 380
• Court: U.S. Court of Appeals — Second Circuit
• Parties: KNAPP v. WILL & BAUMER CO.

273 F. 380

KNAPP v. WILL & BAUMER CO.

No. 118.

United States Court of Appeals, Second Circuit.

March 9, 1921

Howard P. Denison and Eugene A. Thompson, both of Syracuse, N.Y for appellant.

Wordsworth B. Matterson and Frank T. Miller, both of Syracuse, N.Y., and William G. Henderson, of Washington, D.C., for appellee.

Before WARD, ROGERS, and MANTON, Circuit Judges.

ROGERS Circuit Judge.

This is a suit in equity arising under the patent laws of the United States. The plaintiff is the owner of letters patent No. 44,480, issued to him by the United States Patent Office on August 13, 1913, and is a design patent for an improvement in candles.

The patent has never been assigned, and the plaintiff is now and always has been the sole owner of the patent. He has caused large numbers of candles embodying the patented design to be made and sold under his license by the Edward J. Knapp Candle Company, a corporation existing under the laws of the state of New York, with its principal place of business at Syracuse in said state. The plaintiff is a large stockholder in the company, as well as its president and manager, and alleges that he derives large profits from the manufacture and sale of the patented candles. The license is personal, and not assignable, and not in writing.

In his application for the patent the plaintiff states that the following is a specification, reference being had to the accompanying drawing, forming a part thereof:

'The figure is a perspective view of a candle, showing my new design. The design as illustrated in the drawing is a pillar or column substantially square in cross-section mounted upon a substantially cylindrical longitudinally fluted pedestal and surmounted by a bell-shaped cap, with its base lines set back from the square edges of the pillar top.

'I claim: The ornamental design for a candle, as shown and described.'

The following is a fac simile of the drawing filed with the application:

(Image Omitted)

The court below entered a decree holding that the patent was valid and infringed by the defendant. 253 F. 191. The case was heard again in that court on new and additional evidence, for the introduction of which the prior decree was opened. But at the second hearing the court adhered to the former decision. 'I regard this,' said the District Judge, 'as a close case, but on consideration of the evidence heretofore taken and the new and additional evidence I am constrained to adhere to the decision made.'

The application for this patent was filed February 3, 1911, and on March 11, 1911, was rejected, by the Examiner in the Patent Office, on the state of the art cited. The Examiner declared: 'There is held to be nothing patentably novel set up in this application. ' On April 19, 1911, it was again rejected by the Examiner on the ground of want of any patentable novelty. On October 10, 1911, another application was filed; the original having been amended. On November 23, 1911, the applicant was informed that the application was again rejected, and was informed that--

'It must be again held that applicant's design fails to present anything patentably novel from an ornamental standpoint over the reference of record. * * * The claim is accordingly again and finally rejected on the state of the art cited.' The case was then appealed to the Board of Examiners in Chief. On July 10, 1913, the board sustained the application and reversed the examiner. They said:

'There appears to us to be a certain unity in design between a rectangular form of a candle and that of the tip, which possesses some degree of novelty and invention, which is sufficient to support a design patent, and we therefore reverse the decision of the Examiner.'

On August 12, 1913, the patent was accordingly issued.

The design law was intended to encourage the decorative arts. It therefore deals with the appearance of the thing designed, rather than with its structure, uses, or functions. But in a design patent, as in a mechanical patent, the subject-matter must be novel, and must have called for an exercise of the inventive faculties. If either of these essentials is absent, the patent cannot be sustained.

In order that there may be novelty, the thing must not have been known to any one before. Mere novelty of form is insufficient. O'Reilly v. Morse, 15 How. 62, 14 L.Ed. 601. The patent in suit is a square candle. But any one had as much right to make a candle square as to make it round. There are some standard forms and shapes that are known to every one and inherently open to any one to use. The right to make any article round or square is open to all. Novelty cannot be predicated of either. But it is equally plain that to make candles square, instead of round, does not involve any exercise of the inventive faculties, and invention is required as much in design patents as in other kinds of patents. It has been held that design patents stand on as high a plane as utility patents and require as high a degree of exercise of the inventive or original faculty. Perry v. Hoskins (C.C.) 111 F. 1002; Myers v. Sternheim, 97 F. 625, 38 C.C.A. 345; Western Electric Mfg. Co. v. Odell (D.C.) 18 F. 321.

But the patent appears to have been granted upon the theory that there is 'some degree of novelty and invention' in the combination of the bell-shaped tip with the square form of the candle; that is, in the setting back of the base of the bell shaped cap from the square edges of the square column having flat sides. That was certainly the theory upon which the validity of the patent was sustained in the court below and the theory upon which the patent was granted in the Patent Office. In the court below the District Judge said:

'While, in view of the prior art, it may be doubted whether there is patentable invention in this combination containing this feature, I am inclined to hold the patent valid as the presumption is in its favor.'

The grant of the patent by the Patent Office makes out a prima facie case for the successful applicant, and one who attacks it has the burden of showing that the Patent Office reached a wrong conclusion concerning it. And in our opinion in this case the burden of proof has been sustained by the defendant.

It must be conceded that, if there is any possibility of inventive genius being present in this design patent, it can only be found in the peculiar form of the tip. What Knapp has done was to place a small coach candle tip in the center of a square column. To do this did not show patentable novelty or involve inventive genius. The patent in suit was, as we have seen, granted in August, 1913. But in 1906 there was published Lamborn's American Soaps, Candles and Glycerine. That work, on page 526, contains the following statement:

'Candles are molded in a great variety of shapes; the most common shape being that of a plain cylinder of varying diameter and length. A great variety of ornamental forms for religious and decorative purposes are molded in numerous prismatic cross-sections, as squares, triangular, octagonal, etc. They may also be molded longitudinally or spirally fluted.'

And on page 530 there is the following statement:

'Candles may be made with tapering butts, to enable them to fit any holder either by use of the tapering machine shown in Fig. 201, or by the use of additional molds inserted in the fluted or regular candle mold. A type of candle of this description is shown in Fig. 197. The first self-fitting end candle is attributed to Field, who in 1861 patented his device for giving candles a conical end or butt by molding.'

Knapp's own testimony admits that the base of his candle was not new. This is his admission:

'Q. Was it also ancient to make candles with this particular kind of a base on them? A. That was made a good many years ago, I believe; back 20 years, that I know of.'

The following is an illuminating excerpt from his testimony:

'Q. Now take Plaintiff's Exhibit 4 and tell us of record. Show his honor exactly how you made that particular candle. In the first place, you started with what sort of a candle? A. A round candle.

'Q. Probably such as his honor referred to yesterday? A. I should imagine it was. After the round candle was casted, it was drawn through a hot die, and that die was square; the result is, it made that candle.

'Q. It transformed that from a round candle into a square candle? A. Into a square candle.

'Q. Where did you learn that sort of thing? A. The die for drawing candles?

'Q. ...