Lee v. Dayton-Hudson Corp., Civ. No. 3-84-751.
| Decision Date | 19 March 1987 |
| Docket Number | Civ. No. 3-84-751. |
| Citation | 2 USPQ 2d 1300,666 F. Supp. 1072 |
| Parties | Robert W. LEE, d/b/a Rollo-Laxer, Plaintiff, v. DAYTON-HUDSON CORPORATION, d/b/a Target Stores, et al., Defendants. |
| Court | U.S. District Court — Eastern District of Tennessee |
Robert E. Pitts, R. Bradford Brittian, Knoxville, Tenn., for plaintiff.
Douglas L. Dutton, Knoxville, Tenn., for Dayton-Hudson.
Geoffrey D. Kressin, Knoxville, Tenn., for Matrix.
This is an action for patent infringement and arises under the patent laws of the United States (Title 35, U.S.C.). Jurisdiction is based upon 28 U.S.C. § 1338(a) and is not in dispute. The plaintiff, Robert W. Lee (hereinafter "Lee"), is the owner of United States letters patent design number 259,142 (sometimes hereafter referred to as "D'142") for the invention of the ornamental design for a massage implement. Defendants, Dayton-Hudson Corporation, d/b/a Target Stores (hereinafter "Dayton-Hudson") and Matrix International, Inc. (hereinafter "Matrix"), have marketed and sold three massage implements which plaintiff claims infringe his patent.
This action was bifurcated for trial. On March 16, 1987, trial, without intervention of a jury, was held on the following two issues which the parties have raised: (1) whether plaintiff's design patent number 259,142 was validly issued; and (2) if so, have the defendants infringed that patent. The question of what relief the plaintiff is entitled to has been reserved for trial on a later date if it becomes necessary.
The following constitutes this Court's findings of fact and conclusions of law in conformity with Rule 52(a), Fed.R.Civ.P.
On May 5, 1981, the United States letters patent D'142 was issued to plaintiff, Robert W. Lee, and Robert H. Fulkerson for an invention of the ornamental design for a massage implement. Lee is now the owner of the entire patent. The patented design consists of an elongated wooden handle to which at one end are attached a pair of rotating balls or, as they are described by the plaintiff, "massage members". The massage members have a "fuzzy" appearance and a continuous seam and are, in fact, tennis balls. Since a picture can be worth a thousand words, an illustration of plaintiff's patented design (hereinafter referred to as "patented implement") is provided in Exhibit A to the Appendix to this Opinion.
Subsequent to the issue of plaintiff's patent, defendant began marketing and selling three types of massage implements which plaintiff claims infringe his patent. The parties have identified the three alleged infringing devices as follows:
1. The Anthony Williams model 2293;
2. The Matrix model 50; and
3. The Matrix model 1050.
Each of these three implements also consist of an elongated wooden handle to which at one end are attached two rotating balls or massage members. The alleged infringing implements contain a number of differences from the patented design, the most significant of which is that the rotating balls are wooden balls rather than tennis balls. Illustrations of the three alleged infringing devices are provided in Exhibits B, C and D in the Appendix to this Opinion.
The defendants do not dispute that they have marketed and sold the alleged infringing devices.
The first issue presented is the validity of plaintiff's patent. 35 U.S.C. § 171 provides as follows:
Thus, for a design patent to be valid under Title 35, it must be "new, original, ornamental, nonobvious, and the result of invention." Clark Equipment Company v. Keller, 570 F.2d 778, 799 (8th Cir.), cert. denied, 439 U.S. 825, 99 S.Ct. 96, 58 L.Ed.2d 118 (1978). Under 35 U.S.C. § 282, a patent "which has survived the scrutiny of the patent office carries a presumption of validity, and a party objecting to the validity of a patent bears the burden of establishing invalidity." Id. at 794. The defendants challenge the nonobviousness of plaintiff's patent.
The standard for determining whether subject matter sought to be patented is nonobvious is set forth in 35 U.S.C. § 103:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in Section 102 of this Title, 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 time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Accordingly, in order to determine the nonobviousness of the patented design, this Court is required to examine the prior art. A number of illustrations showing the prior art cited by the examiner in the United States Patent and Trademark Office and by defendants in their Section 282 Notice of Prior Act are displayed in Exhibit E to the Appendix to this Memorandum.
A review of the prior art demonstrates a number of massage implements containing one or more rotating balls or massage members. Many of the devices contain handles. However, none contain, as the plaintiff's patented implement does, an elongated wooden handle with two rotating balls at one end.
The defendants presented no expert testimony at trial on the issue of whether the prior art was 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 the subject matter pertains." Comparing the plaintiff's patented design with the prior art, this Court is of the opinion that the defendants have not borne their burden of establishing the invalidity of plaintiff's patent.
The second issue is whether, given the validity of plaintiff's patent, any of the implements manufactured and sold by the defendants infringe that patent. The test for infringement of a design patent was established by the United States Supreme Court in Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 526-28, 20 L.Ed. 731 (1871). That test is still valid today:
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Lee v. Dayton-Hudson Corp.
...court found that "there is not a substantial identity of appearance between them so as to deceive the ordinary observer". Lee, 666 F.Supp. at 1074, 2 USPQ2d at 1302. Mr. Lee argues that his design patent covers a massage device wherein an elongated handle has two opposing balls at one end, ......