Macbeth-Evans Glass Co. v. Rosenbaum Co.

• Decision Date: 05 August 1912
• Docket Number: 127.
• Citation: 199 F. 154
• Parties: MACBETH-EVANS GLASS CO. v. ROSENBAUM CO. et al.
• Court: U.S. District Court — Western District of Pennsylvania

199 F. 154

MACBETH-EVANS GLASS CO. v. ROSENBAUM CO. et al.

No. 127.

United States District Court, W.D. Pennsylvania.

August 5, 1912

Paul Synnestvedt and James I. Kay, both of Pittsburgh, Pa., for plaintiff.

Weil &amp Thorp and A.M. Neeper, all of Pittsburgh, Pa., for defendants.

YOUNG District Judge.

This is a bill filed by the Macbeth-Evans Glass Company for infringement of design patent for lamp shades No. 41,785 granted to H. S. evans September 19, 1911, and which it is alleged the defendant, the Rosenbaum Company, has infringed. The other defendant, the Jefferson Glass Company, was allowed to intervene and become a party defendant; it having alleged that it was the manufacturer of the lamp shades used by the Rosenbaum Company and which had been sold to that company through Stinson, Kennedy & Co., who had contracted with the Rosenbaum Company for the furnishing of the lamp shades. It is admitted that the patent in controversy was assigned to the Macbeth-Evans Glass Company by H. S. evans on August 16 1911, before its issue. We gather from Fig. 1 of the drawings accompanying the application for the patent that the design consisted of a bell-shaped glass shade having a slightly concave curve from the neck for a short distance, and then a gradual reverse convex curve to the bottom of the shade. Upon this is formed panels and ribs. The whole outward surface is formed into panels by narrow ribs. The ribs are triangular with the body of the shade as a base, and reaching an apex above the surface of the shade and the adjacent panel. The rib, having a pointed end, begins on the bottom rim of the shade below the adjacent panel, and gradually narrows and retreats from the adjacent panels on either side until it disappears in a narrowing groove at the neck of the shade. Fig. 2 of the drawings shows that the pointed rib is triangular, having for its base a segment of the circle passing through the different points of the rim where the panels and ribs have a common meeting point. The articles manufactured under this patent offered as exhibits by both complainant and defendant, 'complainant's patent shade' and 'Defendant's Exhibit of Complainant's Shade, January 19, 1912,' both show that some of the ribs are triangular, reaching an apex above the adjacent panels, and some are slightly rounded or flattened. The shades are manufactured in moulds, and have a uniform surface on the entire inside, and the panels and ribs gradually increase in thickness from the top of the convex curve near the neck to the bottom of the shade. The defenses are, first, noninfringement; second, invalidity of the patent over prior art; and, third, invalidity of the patent on account of the claim that the patentee, Evans, was not the true and original inventor of the subject-matter, but that the same was invented by one Lorin W. Young. For the sake of logical consideration we shall take these up in the following order: First, the invalidity of the patent; second, whether Young was the inventor; and, third, infringement.

First, as to the defense that the patent is invalid because of the prior art. Patent No. 41,785, having been issued to Evans and by him assigned to complainant without more, would be a valid patent, and the burden was therefore on the defendants to show its invalidity in the light of the prior art. Defendants undertook to do this by offering in evidence, as showing the bell-shaped contour, the narrow ribs alternating with the broad panels, and the scallops at the lower edge, the following patents: Design patent No. 26,647, issued February 16, 1897, to E. F. Caldwell; design patent No. 37,812, issued July 15, 1905, to O. A. Mygatt; design patent No. 37,424, issued May 2, 1905, to K. Booth; design patent No. 40,607, issued April 5, 1910, to O. A. Mygatt; patent No. 790,026, issued May 16, 1905, to K. Booth-- and the following exhibits: Fig. 8,715, p. 31, Pettingell-Andrews Company catalogue, filed in the Patent Office February 8, 1909; plate 6, cut P 804, and plate 7, cut 800, Pettingell-Andrews Company catalogue, 1904; page 138, cut 4,229, and page 148, cut 4,715, in the Morreau catalogue 4, copyrighted 1903; page 30, cut 3,107, in Bauer catalogue, 1904; plate 4, cut 6,514 1/2, and plate 4, cut 6,517 1/2, in Phoenix catalogue 16; pages 589, 595, 597, 626, and 664 of the Electrical Merchandise Catalogue No. 12 of Pettingell-Andrews Company-- and exhibits of manufactured shades as follows: Defendants' Exhibit narrow Sheffield design, Defendants' Exhibit wide Sheffield design, and Defendants' Exhibit 'Opallux' and 'Pheno,' designed by Howard E. Watkins.

The question, then, is whether there is identity of design in the patent of Evans viewed in the light of the state of the art as shown by the prior patents and by the preceding exhibits. We find the true test of identity of design laid down in Gorham Co. v. White, 14 Wall. 511, 20 L.Ed. 731, where Mr. Justice Strong says, on page 525:

'And the thing invented or produced, for which a patent is given, is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form. The law manifestly contemplates that giving certain new and original appearances to a manufactured article may enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public.'

An examination of the patents, figures, and manufactured shades in evidence shows that there is a great and substantial difference between the shades patented, pictured, and made under prior patents and in the prior art and the design of the Evans patent. True, they are all more or less bell-shaped, in that they are narrower at the top than at the bottom; they are all traversed or cut up by ribs narrow or broad; they are all more or less scalloped at the lower edge, and among those that are moulded or pressed the inside surface is uniform and not broken up or fluted, but the most casual and superficial examination of the exhibits in the prior art shows that there is in the patent in suit, not only a striking difference in the design of the contour of the shade arising from the convex and concave curve between the lower edge and the top of the shade, but also in the conformation of the ribs and panels, where we find the narrow rib alternating with the broad panel. The above differences are very apparent to an ordinary observer, but these differences in construction would not determine the question of identity of the Evans design with those shown by the evidence as to the prior state of the art if those differences did not produce a different effect. As is said in Gorham Co. v. White, supra, 14 Wall. 525, 20 L.Ed. 731:

'Manifestly the mode in which those appearances are produced has very little, if anything, to do with giving increased salableness to the article. It is the appearance itself which attracts attention and calls out favor or dislike.'

And again on page 526 of 14 Wall. (20 L.Ed. 731):

'We do not say that in determining whether two designs are substantially the same, differences in the lines, the configuration, or the modes by which the aspects they exhibit are not to be considered; but we think the controlling consideration is the resultant effect.'

Giving proper consideration then to the differences above pointed out, we inquire next whether or not the effect produced upon the eye of an ordinary observer is the same. Unmistakably, if we look at the Evans design, and those other designs offered in evidence, we at once see that an entirely different effect is produced. In the Evans design, we have a new and pleasurable sensation of symmetrical beauty in contour and configuration entirely different from the sensation of beauty produced by looking at the prior designs, and this apart from the impression of beauty produced when viewing them in use with electric or other light showing through them, because we are of opinion that, in determining the validity of a patent, whether two designs are identical is to be determined by examining the drawings and the manufactured article, and that it is only in determining the question of infringement that we may resort to and consider the design in use. A comparison of the drawings in the different patents with the drawings in the Evans patent shows this manifest difference in effect. A comparison of the engravings in the catalogues offered in evidence with the drawings in the Evans patent shows the same apparent difference in effect. A comparison of the shade manufactured under the Evans patent with the manufactured shades, 'narrow Sheffield,' 'wide Sheffield,' 'Opallux,' and 'Pheno' shows the same unmistakable difference in effect. So that from a comparison from all points of view we arrive at the conclusion that the Evans design is different from all those preceding it. We therefore hold that the patent is valid.

Second as to the invalidity of the patent on the ground that the design was invented by Lorin W. Young, and not by Evans, the patentee. Patent No. 41,785 for the invention in controversy, having been issued to Howard S. Evans and the same having been offered in evidence, was prima facie evidence of invention and of the regularity of the issuance of the patent. Railroad v. Stimpson, 14 Pet. 448, 10 L.Ed. 535; Corning v. Burden, 15 How. 252, 14 L.Ed. 683; Blanchard v. Putnam, 8 Wall. 420, 19 L.Ed. 433; Marsh v. Seymour, 97 U.S. 348, 24 L.Ed. 963. The burden is therefore upon the defendant to overcome the presumption. Mitchell v. Tilghman, 19 Wall. 287, 22 L.Ed. 125; Singer Mfg. Co. v. Brill, 54 F. 380, 4 C.C.A. 374. And this must be established, not only by the weight of the evidence, but the evidence must be free from doubt. Forgie v. Oil-Well Supply Co., 58 F. 871, 7...